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Malaysia – IPR TOOLKIT 

Table of Contents

I. What is IPR? .....................................................................................................................................................................................................3

II. Current IPR Framework .....................................................................................................................................................................................3

A. Copyright ...........................................................................................................................................................................................................3

B. Trademarks.........................................................................................................................................................................................................4

C. Trade Secrets......................................................................................................................................................................................................5

D. Patents................................................................................................................................................................................................................5

E. Industrial Designs...............................................................................................................................................................................................6

F. Enforcement .......................................................................................................................................................................................................6

III. COPYRIGHT.....................................................................................................................................................................................................7

A. Registration ........................................................................................................................................................................................................7

B. What can be Protected by Copyright Law..........................................................................................................................................................7

C. Where to Register...............................................................................................................................................................................................7

D. Infringement and Enforcement...........................................................................................................................................................................7

IV. TRADEMARK ..................................................................................................................................................................................................8

A. Registration ........................................................................................................................................................................................................8

B. What can be Registered......................................................................................................................................................................................9

C. Where to Register...............................................................................................................................................................................................9

D. Infringement and Enforcement...........................................................................................................................................................................9

E. Geographical Indications..................................................................................................................................................................................10

V. PATENTS ........................................................................................................................................................................................................11

A. Registration .....................................................................................................................................................................................................11

B. What can be Registered....................................................................................................................................................................................11

C. What cannot be Registered...............................................................................................................................................................................12

D. Where to Register.............................................................................................................................................................................................12

E. Infringement.....................................................................................................................................................................................................12

VI. INDUSTRIAL DESIGNS ................................................................................................................................................................................12

A. Registration ......................................................................................................................................................................................................12

B. What can be Protected......................................................................................................................................................................................12

C. Where to Register.............................................................................................................................................................................................12

D. Infringement.....................................................................................................................................................................................................12

VII. Current Malaysia Intellectual Property Legislation..........................................................................................................................................13

A. Legislation........................................................................................................................................................................................................13

B. International Treaties........................................................................................................................................................................................13

CHARTS THAT GUIDE THE U.S. COMPANY STEP-BY-STEP THROUGH THE PROCESS IN Malaysia.....................................................14

1. Figure 1: Flowchart of patent application and granting procedure ...................................................................................................................14

2. Figure 2: Flowchart of trademark application procedure .................................................................................................................................15

3. Figure 3: Flowchart of the geographical indications application procedure .....................................................................................................16

4. Figure 4: Flowchart of copyright-voluntary notification ..................................................................................................................................17

5. Figure 5: Flowchart of industrial design application procedure .......................................................................................................................18

NOTE: The United States Government thanks you for your interest and concern regarding the protection of intellectual property

rights. This toolkit is meant to be a helpful resource for basic information gathering with respect to Malaysia’s intellectual property 

laws. This toolkit is not to be used to guide legal decisions, and does not qualify as any type of legal advice. Always seek legal 

counsel within the jurisdiction in which protection is sought before making any decisions concerning your intellectual property 

rights protection. A list of lawyers and legal aid is available on the United States Ambassador’s website.
April, 2018| 3

MALAYSIA IPR TOOLKIT

I. What is IPR? 

Intellectual property (“IP”) and intellectual property rights (“IPR”) refer to the legal rights given to people for creations 

and innovations of their minds. IPR contains of a multitude of facets, including primarily, but certainly not limited to: 

copyrights, trademarks, patents and trade secrets. Copyrights are the rights granted to original works of authorship in fixed, 

tangible mediums. Trademarks are words, names, symbols or devices used by a business to distinguish its goods from 

those of its competitors. Patents are granted to inventors of a new, useful process, machine, article of manufacture or 

composition of matter, or to any useful improvement thereof. Trade secrets are things such as recipes, processes, formulas 

and strategies that derive independent economic value and advantage to an individual or business that goes through 

reasonable efforts to maintain their secrecy. Smaller, but equally-important facets of IP include things such as 

geographical indications, plant variety patents, registered designs, etc.

II. Current IPR Framework

Malaysian law relating to intellectual property is 

provided primarily through legislation such as the 

Copyright Act 1987, Trade Marks Act 1976, Industrial 

Designs Act 1996 and Patents Act 1983. Some concepts 

in IPR protections, including passing off (i.e. protection 

for unregistered trademarks) and confidential 

information (i.e. trade secrets) are based on English 

common law.

Malaysia has a Registry of Trademarks, Industrial 

Designs and Patents (the Registry) for the registration of 

trademarks and the grant of industrial designs and

patents. While there is no compulsory registration 

system for copyright, there is a copyright voluntary 

notification system. 

The Intellectual Property Corporation of Malaysia 

(MyIPO) is the entity empowered to register trademarks, 

industrial designs and patents as well as copyright 

notification. The Enforcement Division of the Ministry 

of Domestic Trade, Co-operatives and Consumerism 

(MDTCC) is the agency responsible for the criminal 

enforcement of trademark and copyright infringement. 

The Intellectual Property Court handles civil action 

involving intellectual property infringement.

A. Copyright

The basis of Malaysian copyright law is the Copyright 

Act 1987 and the Copyright (Amendment) Act 1997. 

Under Malaysian law, copyrights give the creator of a 

work exclusive rights to reproduce, create derivatives of, 

distribute, perform, display or transmit the work, and 

deny others those rights unless the creator grants 

permission. The law stipulates that copyright protection 

in Malaysia exists regardless of the quality of the work 

or the purpose for which it was created, and prevents 

unauthorized reproduction of the work in any material 

form, including the three-dimensional reproduction of 

artistic works.

Works eligible for copyright protection under the 

Copyright Act include the following:

• Literary works (computer programs are treated as 

literary works);

• Artistic works;

• Musical works;

• Films; 

• Sound recordings;

• Broadcasts;

• Derivative works, i.e. works derived from works 

eligible for copyright; and

• Published edition of works.

Pursuant to the Copyright Act, a work is automatically 

legally protected under the following conditions:

a. Sufficient effort has been made to make the work 

original in character;

b. The work has been written down, recorded or reduced 

to material form; and

c. The author is a qualified person, the work is made in 

Malaysia, or the work is first published in Malaysia.

Term

The basic term of copyright under the current legal 

framework is the life of the author plus 50 years. For 

published editions, sound recordings, photographs, films 

(including video films) and broadcasts, the term of 

copyright is 50 years from the beginning of the calendar 

year following the year in which the work was first 

published or broadcast. Under the Copyright 

(Amendment) Act 2000, performers have copyright 

protection to their live shows for 50 years.

Ownership

The first owner of copyright is the author. With certain 

exceptions, the author of a work is the person who 

created the work. Where a work has been specially 

commissioned, or is made in the course of the author’s 

employment, copyright is deemed to be transferred to 

the commissioner or employer, unless there is an 

agreement to the contrary. It is also possible to assign 

future copyright, in which case copyright will vest 

automatically in the assignee once the work is made.
April, 2018| 4

Berne Convention

As Malaysia is a signatory of the Berne Convention, 

copyrighted works created in Malaysia would be 

recognized by each contracting member country of the 

Berne Convention.

Exclusive Rights of the Copyright Owner

Copyright gives the owner a bundle of exclusive rights 

to do the following in relation to literary, musical and 

artistic works, films sound recordings and derivative 

works.

The copyright owner has the exclusive right to control 

the following in Malaysia, in relation to the work and its 

derivative form:

• Reproduction in any material form;

• Communication to the public;

• Performance, showing or playing to the public;

• Distribution of copies of the work to the public by sale 

or other transfer of ownership; and

• Commercial rental to the public.

Under the Copyright (Amendment) Act, derivative 

works are defined broadly to include translation, 

adaptations, arrangements, other transformations of 

works eligible for copyright and also collections of 

works eligible for copyright that constitute intellectual 

creation by virtue of the selection and arrangement of 

their contents. With this amendment, multimedia works 

will be eligible for copyright protection.

Licensing

A license of copyright must be in writing. Where a

copyright is in joint ownership, a license granted by one 

of the joint owners will have effect as though it had also 

been granted by his or her co-owner(s). It is possible to 

license both existing copyright and future copyright.

Moral Rights

The Copyright Act provides for the recognition and 

protection of the moral rights of the author of the 

copyright work. The essence of moral rights is to protect 

the integrity and reputation of the author. This 

recognizes that the work is an extension of the author’s 

intellect and personality and as there is an intimate bond 

between an author and his/her work, the author should 

be able to safeguard those aspects of his work.

Two types of moral rights are recognized:

i. Right against attribution of authorship to another

This prevents any person from presenting a work 

without identifying the author.

ii. Right of integrity

This gives the author of the work the right to prevent the 

distortion, mutilation or other modification of the work 

that

• Significantly alters the work; and

• Might reasonably be regarded as adversely affecting 

the author’s honor or reputation.

Remedies

In the event of infringement, a copyright owner may be 

entitled to a range of remedies, including damages, 

account of profits, injunction to restrain the infringing 

acts and delivery up. 

B. Trademarks

What is a Trademark?

A trademark is defined as "a mark used or proposed to 

be used in relation to goods or services for the purpose 

of indicating or so as to indicate a connection in the 

course of trade between the goods or services and a 

person having the right either as proprietor or as 

registered user to use the mark whether with or without 

an indication of the identity of the person."

The Trade Mark Act 1976 allows any mark used or 

proposed to be used in relation to goods or services to 

indicate a connection in the course of trade between the 

goods or the services, and the person having the right to 

use the mark to be registered.

The Nature of Trademark Protection

Registration of a trademark gives the proprietor the 

exclusive right to use the trademark as an indication of 

the origin of his particular goods or services. 

Unauthorized use of the trademark without the 

proprietor’s consent shall be deemed to be infringement.

Trademarks, especially marks not capable of registration 

as trademarks for one reason or another, or else are only 

likely to be used for a limited period, do not need to be 

registered to be effective, because the law of passing off 

will provide some measure of protection. However, 

registration confers significant advantages.

Duration

A trademark registration is valid for a period of 10 years 

from the filing date and can be renewed indefinitely for 

subsequent periods of 10 years.

Requirement of Use

A registered mark may be removed from the register if it 

is not used for a period of three years or more. 

Assignment

A trademark can be assigned with or without the 

goodwill of the business concerned. The assignment, 

which is not recorded with MyIPO, will not be 

admissible as evidence in Court to prove title to a 
April, 2018| 5

registered trademark unless the Court otherwise directs.

Licensing

A trademark owner is free to license the right to use his 

trademark as he or she sees fit, and such license will 

normally incorporate a range of obligations relating to 

quality control, royalties, accounts, and so on. While it is 

not compulsory to record a license agreement to use a 

registered trademark with MyIPO, it is beneficial to do 

so. A license agreement serves to equate a registered 

user with the registered proprietor and, furthermore, 

protects a registered user from the vulnerability of 

removal on grounds of alleged non-use.

C. Trade Secrets

Common Law Protection

Malaysia adopts English common law relating to breach 

of confidence. Therefore, the best way to protect and 

maintain the confidentiality of information (i.e. trade 

secrets or proprietary information) is to ensure that 

access to and reproduction of that information is 

restricted.

What is Protected?

Not all information regarded as confidential will be 

protected under breach of confidence. Information in the 

public domain is not protected. The court will examine 

the type of information to determine whether it is of a 

confidential nature. The court will also look at whether 

the information was disclosed in circumstances 

expressly or implicitly imposing a duty of confidence on 

the recipient of information.

Types of Trade Secrets Recognized by 

Malaysian Courts:

• Manufacturing processes;

• Secret formulas;

• Names and addresses of customers and suppliers;

• Specific questions sent to customers;

• Costs of inputs;

• Specific needs of customers;

• Status of ongoing negotiations with customers.

Preventive Action

When dealing with confidential and/or sensitive 

information, entering participating parties into a nondisclosure agreement is the safest way to ensure that 

private information does not become public knowledge.

Breach of Confidence

In Malaysia, the unauthorized disclosure of confidential 

information may give rise to civil liability on the part of 

disclosing party on the basis that a non-disclosure 

agreement between parties demonstrates intent to be 

bound to such an agreement.

A breach of confidence is generally actionable in the 

Malaysian Courts if the following three conditions are 

fulfilled:

i. The information disclosed must be confidential in 

nature. The information may be in respect of trade 

secrets (e.g. customer lists), technological secrets (e.g. 

know how relating to a manufacturing process), 

personal information or any other form of confidential 

information. 

ii. The information must have been imparted in 

circumstances which give rise to an obligation of 

confidentiality. 

iii. There must be an actual or anticipated unauthorized 

use or disclosure of the information.

As there is no system of registration for confidential 

information, it is strongly advisable for a NonDisclosure Agreement (NDA) to be drafted and signed 

by the parties that sets out their obligations to one 

another in terms of any confidential information. In the 

event that a legal action becomes necessary due to a 

breach of confidence, enforcement of the NDA can be 

handled in a similar manner as enforcement of any other 

business contract.

D. Patents

The grant and enforcement of patent rights in Malaysia 

are governed by the Patents Act 1983 (Patents Act) and 

the Patents Regulations 1986. These laws provide for an 

independent patent system for Malaysia whereby a 

domestic application must be filed to secure a Malaysian 

patent. Malaysia is a member of the Patent Cooperation 

Treaty (PCT), making it possible to secure a Malaysian 

patent through a PCT application designating Malaysia.

Who May Apply for Grant of a Patent?

The inventor is entitled to apply for a patent. If more 

than one inventor was involved, a joint application may 

be made which allows each inventor to claim a share in 

the patent rights. In cases where the invention was 

devised by an employee in the course of his 

employment or made pursuant to a commission, the 

patent rights are deemed to accrue to the employer and 

the commissioner respectively.

Utility Innovation

Malaysian patent law provides for the grant of utility 

innovations. A utility innovation is an exclusive right 

granted for a "minor" invention which does not need to 

meet the same “inventiveness standards” as a traditional 

patent. Only one claim is allowed for utility innovations. 

The filing procedure and requirements for utility 
April, 2018| 6

innovations are similar to patent applications.

Duration and Scope of Protection

A patent is protected 20 years from the date of filing, 

and a utility innovation is protected 10 + 5 + 5 years 

from the date of filing subject to use. 

During the period of grant, the patent holder has the 

exclusive right to exploit the invention covered by the 

patent in Malaysia, and to take legal action against any 

infringers of the patent.

Licensing

Every license of a patent must be in writing and signed 

by or on behalf of the contracting parties. Unless there is 

provision to the contrary, a licensee is entitled to 

sublicense some or all of the rights licensed to him. The 

Patents Act provides for licenses of right (for patents or 

utility innovations) and the grant of compulsory licenses 

(for patents only). 

Rights of a Patent Owner and Infringement of a Patent

The owner of a patent has the exclusive right to:

• Exploit the patented invention;

• Assign or transmit the patent; and

• Conclude license contracts.

In this regard, the right to “exploit a patented invention” 

gives the patent owner the monopoly to:

• Make, import offer for sale, sell or use a product, or 

stock such product for the purpose of sale or use;

• Use a process, and make, import, sell or use a product 

obtained directly by means of the process.

A patent is infringed by any person who does any of the 

above without the consent of the patent owner. 

Remedies

The owner of a patent may initiate civil action against 

any person who infringes the patent. The relief available 

for infringement includes damages, account of profits, 

injunction and an order for forfeiture or destruction of 

the infringing goods.

E. Industrial Designs

The protection of industrial designs in Malaysia is 

governed by the Industrial Designs Act 1996 (IDA). The 

Industrial Designs Act creates a local registration of 

industrial designs rather than the previous method of 

registration under England’s Registered Designs Act of 

1949.

Ownership

The owner of the design is normally the author of the 

design. If the design was created by an employee or on 

commission, the employer or commissioner would be 

the owner of the design, barring contracted-for 

agreements.

Duration of Ownership

In Malaysia, a registered industrial design is given an 

initial protection period of five years from the date of 

filing, and is renewable for a further four consecutive 

terms of five years each (a total of 25 years).

Scope of Protection

Under the IDA, the owner of an industrial design has the 

exclusive right to make, import, use, sell, hire, offer or 

expose any article to which the registered industrial 

design is applied. The owner has the discretion to deny 

these rights to anyone else unless specific permission is 

granted.

Assignment and License

A registered industrial design is considered personal 

property and is capable of assignment, transmission or 

being dealt with by operation of law in the same way as 

other personal or moveable property. A person so 

entitled to a registered industrial design is required to 

record his title or interest in the Register of Industrial 

Designs. Failing to register will give no cause of action 

for relief from third parties. An assignment of an 

industrial design must be in writing, signed by both 

parties and recorded in the Register of Industrial Designs. 

Remedies

The owner of a registered design may initiate a civil 

action against an infringer. The relief available for 

infringement includes damages, account of profits, 

injunction and any other legal remedies.

Overlap between Copyright and Design 

Registration

Under the Copyright (Amendment) Act, any registered 

design or any design that is capable of being registered 

under any written law relating to industrial design (but 

which has not been so registered) and that has been 

reproduced more than 50 times by an industrial process 

will not be eligible for copyright protection.

F. Enforcement

The legal framework for the protection of intellectual 

property rights – patents, copyrights, trademarks, 

registered designs, confidential information/trade 

secrets, and the right to take action for passing off –

is relatively well established in Malaysia and, 

generally, such rights may be enforced through civil 

and/or criminal action. Criminal action, however, is only 

available for copyright and trademark infringement.
April, 2018| 7

III. COPYRIGHT

A. Registration 

The Malaysian copyright in work arises automatically 

once the appropriate criteria are fulfilled. Copyright 

owners can claim ownership by way of a Statutory 

Declaration or by filing a Voluntary Notification at 

MyIPO. One method of giving notice of copyright is by 

placing a copyright notice on the work. This notice 

usually consists of the word "copyright" or the symbol 

“©” accompanied by the name of the person/entity 

claiming copyright and the year of creation/publication.

The Copyright (Amendment) Act 2012 introduced and 

implemented a voluntary notification system for 

copyright owners to the MyIPO. The notification is on a 

voluntary basis and does not impede the requirement of 

non-formality for the enjoyment and exercise of the 

copyright protection under the Berne Convention. A 

copyright owner may submit a Copyright Voluntary 

Notification or a simple statutory declaration affirmed 

by a Commissioner of Oath to confirm the ownership of 

the work. The certificate of notification issued by 

MyIPO shall be prima facie evidence of the particulars 

relating to the copyright as stated in the Register of 

Copyright and is admissible in all courts in Malaysia.

B. What can be Protected by Copyright Law

There are four primary requirements for copyright 

eligibility under the Copyright Act:

1. The work is original: The standard of originality 

required is low in that the work does not have to be 

unique or novel. However, the expression of the idea 

must be original, i.e. the work is not copied from that 

of another. Copyright protection does not extend to 

any idea, procedure, and method of operation or 

mathematical concept.

2. The work must be recorded, or otherwise reduced to 

material form to be eligible for copyright: Copyright 

protects only the expression of the idea, and not the 

idea per se. A literary, musical or artistic work must 

be written down, recorded or reduced to material form 

to be eligible for copyright.

3. The work must belong to one of the 6 categories of 

protected works (literary, musical, artistic, sound 

recordings, films and broadcasts).

4. The work complies with the qualifications for 

copyright.

A work will only secure copyright protection if:

• It was made by a citizen or permanent resident of 

Malaysia or a Berne Convention country, or by a 

company incorporated in Malaysia or a Berne 

country;

• it was transmitted from Malaysia or a Berne 

Convention country;

• it was erected in Malaysia or a Berne Convention 

country or being any other artistic work was 

incorporated in a building located in Malaysia or a 

Berne Convention country; or

• it was first published in Malaysia or a Berne 

Convention country (and not elsewhere) or it was 

published in Malaysia or a Berne Convention country 

within 30 days of its first publication elsewhere. 

(“Publication” is given a specific definition in the 

1987 Act which involves publication sufficient to 

“satisfy the reasonable requirements of the public”).

C. Where to Register 

Because there is no official registration system, a 

copyright owner may submit Copyright Voluntary 

Notification to:

Registrar, Copyright Department

Intellectual Property Corporation of Malaysia (MyIPO)

Unit 1-7, Ground Floor, Menara UOA Bangsar

No. 5 Jalan Bangsar Utama 1

59000 Kuala Lumpur

Tel: +603-22998400 Fax: +603-22998989

D. Infringement and Enforcement 

Copyright infringement carries both civil and criminal 

penalties.

Civil Infringement

The Copyright Act defines the exclusive rights of a 

copyright owner. These rights include control over the 

reproduction, communication to the public, distribution 

of copies of the work to the public by sale or transfer of 

ownership and the commercial rental of the work (or a 

substantial part thereof) in its original or derivative form. 

To exercise any of these exclusive rights without license 

from the copyright owner, or cause anyone to do so, may 

amount to infringement.

The Act provides for various “fair use” exceptions, such 

as limited copying by libraries and use by the press for 

purposes of reporting current events. Activity that leads 

to profit for the infringer is unlikely to amount to fair use.

Criminal Provisions 

The Copyright Act prohibits various dealings in 

infringing copies as follows:

• Making for sale or hire any infringing copy;

• Selling, letting for hire or by way of trade, exposing or 

offering for sale or hire any infringing copy;

• Distributing infringing copies;

• Possessing, otherwise that for his private and domestic 

use, any infringing copy;

• By way of trade, exhibiting in public any infringing 
April, 2018| 8

copy; or

• Importing into Malaysia, otherwise than for his 

private and domestic use, an infringing copy.

To avoid liability, a defendant must show that he or she 

acted in good faith and had no reasonable grounds for 

supposing that copyright would or might thereby be 

infringed.

The Copyright Act also enables the owner to sue for a 

breach of their moral rights and to claim damages and 

the publication of corrections.

The Enforcement Division of the Ministry of Domestic 

Trade and Consumer Affairs is responsible for copyright 

enforcement in Malaysia. Copyright owners shall lodge 

an official complaint supported by the necessary 

documents to the Enforcement Division of MDTCC if 

they suspect infringement. The Division will then 

conduct the necessary investigations and prosecutions. 

IV. TRADEMARK

A. Registration

Application Procedure

An application for trademark registration is made by 

completing and filing Form TM5 (Application for 

Registration of a Trademark), which contains the 

filing particulars and representation of the mark, with 

the Form TM1 (Address of Service). The applicant is 

also required to affirm a statutory declaration stating that 

the applicant is the bona fide proprietor of the trademark 

and that the application is filed in good faith. At the time 

of filing, applicants will be given an application number 

together with the filing date of the application. When the 

mark is registered, the application number becomes the 

registration number and registration will date back from 

the date of application.

Examination by the Registry

After the application to register the trademark is filed, it 

will be examined for registrability.

Registrar’s Objections

If objections are raised, the Registrar sends an official 

letter giving the reasons for the objection to which the 

applicant has two months to reply. Further extensions 

may be available. In response, the applicant must explain 

why the application should be accepted for registration.

If the Registrar accepts the submissions, the application 

will then proceed to be advertised in the Government 

Gazette. However, if the submissions are unsuccessful, 

the Registrar will issue another official letter explaining 

its objections. The applicant then has the opportunity to 

request a formal hearing before a senior officer of the 

Registry. If that fails, the matter may be appealed to the 

High Court.

Advertisement

Upon acceptance, the Registrar will issue a form (Form 

TM31) with details of the application for confirmation 

by the applicant or its trademark agent. Once the form 

has been signed and returned with the requisite fee, the 

Registrar will proceed to advertise the application in the 

Government Gazette.

Opposition

Upon advertisement, there is a period of two months 

in which opposition against the mark may be raised. 

Opposition is initiated by filing the prescribed notice 

in writing (Form TM7), explaining the grounds for 

opposition with the Registrar of Trademarks and with a 

copy to the applicant. The applicant is then required 

to send a counter-statement (Form TM8) to the 

Registrar and the opponent within two months. 

Afterwards, both parties will file their evidence. The 

Registrar will then request that both parties file 

written submissions in support of their case. The 

Registrar will then consider all of the evidence and 

submissions and decide whether or not to allow 

registration of the trademark.

The opposition process can be an important part of the 

maintenance of trademark rights, as it presents an 

opportunity for trademark owners to attempt to prevent 

marks from entering the market which could cause 

confusion.

Registration

If there is no opposition, the Registry will accept the 

mark for registration and issue a Certificate of 

Registration. Registration is effective from the date of 

application.

Expedited Examination

Trade Marks Regulations (Amendment) 2011 introduced 

an expedited examination procedure for applicants for 

the registration trademarks in Malaysia. Applicants are 

required to obtain the approval of the IPCM for the 

expedited examination. To qualify for expedited 

examination, an applicant must submit their request 

within four months from the date of the application. The 

Registrar of the IPCM must be satisfied that the request 

for expedited examination was made based on one of the 

following grounds:

• For national or public interest;

• That there are infringement proceedings pending;

• That the application for the trademark registration is a 

pre-requisite for availing of monetary benefits or 

schemes run by the Government or by an institution 

recognized by the Registrar;

• Any other reasonable grounds.
April, 2018| 9

Priority

A Malaysian application can be used as a basis for 

claiming priority in countries which are party to the 

Paris Convention and World Trade Organization (WTO).

B. What can be Registered 

Any mark used or intended for use in relation to goods 

to indicate a connection in the course of trade between 

the goods/services and a lawful user of the mark may be 

registered, provided that the mark is inherently 

distinctive, or at least capable of distinguishing the 

goods of the user from the goods/services of others. To 

be registrable in the Register, a mark must be inherently 

distinctive of the proprietor's good/services, by being:

a. the name of an individual, company or firm 

represented in a special or particular manner;

b. the signature of the applicant for registration or of 

some predecessor in his business;

c. an invented word or words;

d. a word having no direct reference to the character or 

quality of the goods or services not being, according 

to its ordinary meaning, a geographical name or 

surname; or

e. any other distinctive mark.

The following marks are not registrable under the Trade 

Mark Act:

a. if use of the mark is likely to deceive or cause 

confusion to the public, or would be contrary to law;

b. if the mark contains or comprises any scandalous or 

offensive matter, or would otherwise not be entitled to 

protection by any court of law; 

c. if the mark contains a matter which, in the opinion of 

the Registrar, is, or might be, prejudicial to the interest 

or security of the nation;

d. if the mark is identical with, or so nearly resembles, a 

mark which is well-known in Malaysia for the same 

goods or services of another proprietor;

e. if the mark is well-known and registered in Malaysia 

for goods or services not the same as to those in 

respect of which registration is applied for;

f. if the mark contains a geographical indication with 

respect to goods not originating in the territory; and

g. if the mark is intended for wine and spirits that 

contain a geographical indication identifying the 

wines or spirit, but not originating from the place 

indicated.

Under Section 15 of the Trade Mark Act, as well as 

Regulations 13, 14, and 15 of the Trade Mark 

Regulation, trademarks may not be registered if they 

include the following words: 

• Patent, Patented, By Royal Letters Patent, Registered, 

Registered Design and Copyright;

• His Majesty Yang di-Pertuan Agong, Her Majesty 

Raja Permaisuri Agong, The Royal Highness Sultans 

and Their Excellencies Yang di-Pertua Negeri;

• Royal or Imperial Crowns, Arms, Crest, Armorial 

bearings or insignia;

• The Royal Malaysian Army and Royal Malaysian 

Police;

• Red Crescent, Geneva Cross in red and Swiss Federal 

Cross in white or silver on red ground;

• Words or representation of ASEAN and National 

Flower.

C. Where to Register

All applications must be submitted together and with 

the prescribed fee at the Intellectual Property 

Corporation of Malaysia (MyIPO), in Kuala Lumpur, or 

at one of the branch offices located in Sabah and 

Sarawak. Applications, correspondence and enquiries 

should be directed to:

Registrar, Trade Mark Department

Intellectual Property Corporation of Malaysia (MyIPO)

Unit 1-7, Ground Floor, Menara UOA Bangsar

No. 5 Jalan Bangsar Utama 1

59000 Kuala Lumpur

Tel: +603-22998400 

Fax: +603-22998989

D. Infringement and Enforcement

Infringement 

A registered trademark in Malaysia is infringed by a 

person who, not being the registered proprietor or 

registered user of the trademark, uses a mark that is 

identical with, or so nearly resembling, the mark in 

question and could feasibly deceive or cause confusion 

in the course of trade in relation to goods in respect of 

which the trademark is registered. “Use” of a mark 

extends to the usual activities of manufacture, 

distribution and sale.

The Trade Marks Act also prohibits counterfeit 

trademarked goods from being imported into Malaysia. 

Under the Trademark Amendment Act, the Malaysian 

Customs and Excise Department and any officer 

appointed by the Minister of Domestic Trade and 

Consumer Affairs (authorized officers) are entitled to 

seize and detain any imported goods that infringe upon a 

registered trademark. However, transhipment goods are 

exempted from seizure.

A passing off action prevent one trader from 

misrepresenting in the course of trade his goods or 

business as being, or being associated in some way with, 
April, 2018| 10

the goods or business of another trader. In order to 

succeed in a passing off action, the plaintiff must show 

that, at the time the defendant commenced the act 

complained of, the plaintiff had acquired a substantial 

reputation and goodwill in the name, trading style or get 

up of his goods or business. The plaintiff must show that 

the defendant's acts are reasonably likely to injure or 

actually injure the business or goodwill of the plaintiff.

Enforcement

The Trade Descriptions Act 2011 aims to promote good 

trade practices by prohibiting false trade descriptions and 

false and/or misleading statements, conduct and 

practices in relation to the supply of goods and services. 

The Trade Descriptions Act provides criminal remedies 

against those who deal in goods to which a false trade 

description has been applied. 

A trade description is any indication (whether direct or 

indirect) of the following:

• Nature or designation; 

• Composition;

• Fitness for purpose, strength;

• Quality;

• Place or date of manufacture, production, processing 

or reconditioning;

• Person by whom manufactured, produced, processed 

or reconditioned; or

• Other history, including previous ownership or use.

A false trade description includes any false indication, 

directly or indirectly, of any of the foregoing.

An offense is committed under the Trade Descriptions 

Act by any person who, in the course of trade or 

business, applies a false trade description to any goods

or supplies, or offers to supply any goods to which a 

false trade description is applied.

The Enforcement Division 

The Enforcement Division of the Ministry of Domestic 

Trade, Co-operative and Consumerism (MDTCC) is the 

Malaysian government agency responsible for the 

enforcement of the Trade Description Act. 

Officers of the Enforcement Division have discretionary 

powers of investigation, search and seizure. All 

documents and goods seized will be kept in the 

Enforcement Division's custody until criminal 

proceedings brought as a result of the seizures conclude.

Penalties

The Sessions Court is empowered by the Trade 

Description Act to impose the maximum penalties 

provided for under the Trade Description Act:

• A maximum fine of MYR250,000 (approx. 

US$ 65,000) and/or imprisonment for up to three 

years (for a first offense); and

• A maximum fine of MYR500,000 (approx. 

US$ 130,000) and/or imprisonment for up to five 

years (for subsequent offenses).

In the case of a company found guilty of applying a false 

description on any goods, or distributing goods with a 

false description under the TDA 2011, the penalty is 

MYR250,000 (first offense) and MYR500,000 

(subsequent offenses). Where a company is involved in 

an offense, officers of the company may also be guilty of 

an offense if it can be shown that the offense was 

committed with the consent or connivance of those 

officers, or that the offense was attributable to any 

neglect on their part.

However, where a company is found guilty of applying a 

false trade description to any goods as if the goods were 

subject to any rights relating to registered trademark, or 

found to have sold or distribute the same, the penalty 

that can be imposed is a fine not exceeding MYR15,000

(approx. US$ 4,000) for each good bearing the false 

trade description, and a fine not exceeding MYR30,000

(approx. US$ 8,000) for each good bearing the false 

trade description on subsequent offenses.

Whether or not there is a conviction following seizure of 

infringing goods, the court may make an order for 

forfeiture of those goods. The normal practice on 

forfeiture is to destroy infringing goods, but an 

application can be filed with the Enforcement Division 

for preservation of the goods so that they may be used as 

evidence in civil proceedings.

E. Geographical Indications 

The Geographical Indications Act 2000 seeks to provide 

statutory protection for producers and traders of goods 

identified by geographical indications.

A “geographical indication” is an indication which 

identifies goods as originating in a country or territory, 

or a region or locality in that country or territory, where 

a given quality, reputation or other characteristic of the 

goods is essentially attributable to their geographical 

origin. Geographical indications can be used on natural 

or agricultural products, or any product of handicraft or 

industry.

A geographical indication will be protected even if it is 

not registered. The following shall not be protected as 

geographical indications:

• Geographical indications which are contrary to public 

order or morality or territory of origin; 

• Geographical indications which are not, or have 

ceased to be, protected in their country; or 
April, 2018| 11

• Geographical indications which have fallen into 

disuse in their country or territory of origin.

When the application for registration of a geographical 

indication complies with the requirements and is not 

contrary to public order or morality, and no opposition 

has been filed or no appeal to high court has been filed 

against the Registrar's decision, the Register shall 

confirm the geographical indication and issue to the 

applicant a certificate of registration. A certificate of 

registration issued shall be prima facie evidence of the 

facts stated in the certificate and of the validity of the 

registration.

V. PATENTS

A. Registration

Application and Preliminary Examination

An application is made in the prescribed form giving the 

specifications describing the invention, details of the 

matter for which protection is sought, and technical 

information on the invention. 

The application is then examined by the Registry for 

compliance with all formalities. 

Substantive Examination

Within 18 months of the filing date of the patent 

application, the applicant is required to request one of 

the three Substantive Examinations options (i.e., 

Modified Substantive Examination, Normal Substantive 

Examination or Deferred Substantive Examination.) This 

18-month period is absolute and non-extendible, and a 

failure to make a request for substantive examination 

within this period will mean that the application will be 

deemed withdrawn, and reinstatement will not be 

possible.

Modified Substantive Examination

This mode of examination is available to the applicant 

provided there is a corresponding patent which has been 

granted at the time of the filing of the request for 

examination by the patent offices in the Japan, South 

Korea, United States, UK or Australia, or by the 

European Patent Office (EPO). The applicant must 

ensure that the Malaysian application conforms to the 

designated foreign patent. If it does not, the application 

must be amended to conform substantially to the 

designated foreign-granted patent in order to qualify for 

modified examination.

Normal Substantive Examination

In this mode of examination, the application is examined 

for compliance with all substantive and formality 

requirements. Grant of the patent may take longer than 

patents that have gone through modified examination. 

Generally, this option is selected when the applicant 

does not have corresponding applications in any of the 

six specified jurisdictions (US, UK, Australia, EPO, 

Japan, South Korea), is unsure if corresponding patents 

will be granted in those jurisdictions within five years 

from the filing of the Malaysian application, or if the 

applicant will not be amending the Malaysian 

application to conform with the designated foreign 

patent.

Deferment of Substantive Examination

It is possible to defer the request for substantive 

examination for up to five years from the filing date of 

the patent application.

Issuance of Certificate and Advertisement 

of Grant

Upon successful examination, the patent is granted and 

the Registrar will issue the Certificate of Grant and 

record the patent in the Register. Thereafter, the patent 

particulars and abstract will be advertised in the 

Government Gazette. Copies of the full patent 

specification as granted are made available to the public 

after grant.

Any resident in Malaysia who desires to file a patent 

application overseas must seek prior written permission 

from the Registry of Patents Malaysia. Consent is not 

required if the application is filed in Malaysia first, and a 

subsequent application overseas is made at least 2 

months later, provided that no direction is issued by 

Registrar prohibiting or restricting its publication. 

Failure to seek consent is an offence and is punishable 

by a fine not exceeding 15,000 ringgit, imprisonment for 

a term not exceeding two years, or both. 

Malaysia became a member of the Paris Convention on 

January 1, 1989. This provides that applicants for patents 

in one convention country may claim the date of filing of 

the application in that country as the priority date for 

applications in another. However, such "priority 

applications" for patents must be made within 12 months 

of the original filing date. A certified copy of the 

original application must be filed in support of a priority 

application.

B. What can be Registered

In order to obtain a patent, an invention must comply 

with the following requirements:

• World-wide novelty: the invention must be “new” in 

that it must not have been made known to the public, 

whether in Malaysia or elsewhere, before the priority 

date of the application;

• It involves an inventive step: the invention must 

involve an “inventive step,” meaning it must not be 

obvious to a person reasonably skilled in the art; and

• It has industrial application: the invention must be 
April, 2018| 12

capable of being made or used in a form of industry. 

C. What cannot be Registered

The invention must not fall into one of the following 

categories of excluded subject matter:

• Discoveries, scientific theories or mathematical 

methods;

• Plant or animal varieties or essentially biological 

processes for the production of plants or animals 

(other than man-made living microorganisms, 

microbiological processes and the products of such 

microorganism processes);

• Schemes, rules or methods of doing business, 

performing purely mental acts or playing games; or

• Methods for the treatment of human or animal body 

by surgery or therapy, and diagnostic methods 

practiced on the human or animal body (although 

products used in any such methods are patentable).

D. Where to Register

An applicant must file a patent or utility innovation 

application with the Intellectual Property Corporation of 

Malaysia (MyIPO), in Kuala Lumpur, or at one of 

the branch offices located in Sabah and Sarawak. 

Applications, correspondence and enquiries should be 

directed to:

The Registrar

The Patent Registration Office

Intellectual Property Corporation of Malaysia (MyIPO)

Unit 1-7, Ground Floor, Menara UOA Bangsar

No. 5 Jalan Bangsar Utama 1

59000 Kuala Lumpur

Tel: +603-22998400 

Fax: +603-22998989

E. Infringement 

A patent is infringed by any person who, without the 

consent of the owner of the patent, does any of the 

following acts: 

• Makes, imports, offers for sale or sells, uses, or stocks 

such product for the purpose of selling, using or 

offering it for sale; or

• Uses the process, or makes, imports, offers for sale or 

sells, or uses a product obtained directly by means of 

the process.

The owner of a patent has the right to institute court 

proceedings. Any beneficiary (i.e. a licensee) may 

request that the patent owner initiate court proceedings 

for infringement. If the owner refuses or fails to institute 

the proceedings within three months from receipt of the 

request, the beneficiary may institute the proceedings in 

his name after notifying the patent owner of his intention 

to do so. 

The Enforcement Division of the Ministry of Domestic 

Trade and Consumer Affairs is responsible for patent 

enforcement in Malaysia. Patent owners must submit an 

official complaint supported by the necessary documents 

to the Enforcement Division of MDTCC if they suspect 

infringement. The Division then conducts the necessary 

investigations and prosecutions.

VI. INDUSTRIAL DESIGNS

A. Registration 

An application in the prescribed form must be filed at 

the Industrial Design Registration Office accompanied 

by the design drawings, statement of novelty and the 

associated fee. However, foreign applicants are required 

to appoint a Malaysian agent to attend to the filing and 

prosecution of the design application.

B. What can be Protected 

To be registrable under the Industrial Designs Act, a 

design must be new and have features of shape, 

configuration, pattern or ornament that appeal to and 

are judged solely by the eye. A design must not 

include features determined by a method or principle of 

construction, or features of shape or configuration that 

are dictated solely by the function that the article has to 

perform or are dependent upon the appearance of 

another article of which the article is intended by the 

creator of the design to form an integral part.

Priority

An applicant may claim priority based on an earlier 

corresponding application in a convention country filed 

within six months of the local application.

C. Where to Register 

All applications must be submitted together with the 

prescribed fee at the Intellectual Property Corporation of 

Malaysia (MyIPO), in Kuala Lumpur or at one of the 

branch offices located in Sabah and Sarawak. 

Applications, correspondence and enquiries should be 

directed to:

Registrar, Industrial Designs Department

Intellectual Property Corporation of Malaysia (MyIPO)

Unit 1-7, Ground Floor, Menara UOA Bangsar

No. 5 Jalan Bangsar Utama 1

59000 Kuala Lumpur

Tel: +603-22998400 

Fax: +603-22998989

D. Infringement

It is an infringement if any person, without the consent 

or license of the owner, applies the industrial design or 

any fraudulent or obvious imitation of it to any article 

for which the industrial design is registered, or imports 

such an article for which the industrial design is 
April, 2018| 13

registered, or imports such an article into Malaysia for 

the purposes of trade, or sells or hires such an article. An 

infringing design is one which is identical to, or not 

substantially different from, the registered design as 

applied to the goods for which the design is registered.

No criminal remedies are available for registered design 

infringement.

VII. Current Malaysia Intellectual Property 

Legislation 

A. Legislation

Malaysia has a mature set of intellectual property laws 

enacted by legislature which includes the following:

• Trade Marks Acts 1976 (Amendments & Regulations)

• Trade Descriptions Act 2011 

• Copyright Act 1987 (Amendments & Regulations)

• Industrial Designs Act 1996 (Amendments & 

Regulations)

• Patents Act 1983 (Amendments & Regulations)

• Geographical Indications Act 2000 (Amendments & 

Regulations)

• Layout-Designs of Integrated Circuits Act 2000

• Protection of New Plant Varieties Act 2004

B. International Treaties 

Malaysia is currently a member of the following treaties:

• Paris Convention for the Protection of Industrial 

Property

• Agreement on Trade-Related Aspects of Intellectual 

Property Rights (TRIPS)

• Berne Convention

• Patent Cooperation Treaty (PCT)
April, 2018| 14

Annexes: Charts that Guide U.S. Companies Step-By-Step through the Process in Malaysia

Figure 1: Flowchart of patent application and granting procedure
April, 2018| 15

Figure 2: Flowchart of trademark application procedure
April, 2018| 16

Figure 3: Flowchart of the geographical indications application procedure
April, 2018| 17

Figure 4: Flowchart of copyright-voluntary notification
April, 2018| 18

Figure 5: Flowchart of industrial design application procedure