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Question: Malaysia - Protecting Intellectual Property

Answer: Malaysia has not been listed on the Special 301 list since 2012. In recent years, the United States Trade Representative (USTR) conducted Out-of-Cycle Reviews to consider whether Malaysia provided adequate and effective IP protection and enforcement, including with respect to patents.

U.S. intellectual property rights (IPR) owners should consider obtaining IPR protection in Malaysia before introducing their products or services to the Malaysian market. Companies may wish to obtain non-disclosure and non-compete agreements or seek advice from local attorneys or consult with experts in Malaysian IP law, before disclosing their technologies or business information to local partners.

The Intellectual Property Corporation of Malaysia (MyIPO) oversees and administers the Malaysian’s IP system. U.S. IP owners may register or apply for their IP rights in Malaysia for trademarks, patents, industrial designs, and geographical indications. An address for service in Malaysia and a local agent or attorney is generally required when filing IP applications at MyIPO.

As a member of the World Trade Organization (WTO) and World Intellectual Property Organization (WIPO), Malaysia generally observes the international intellectual property standards established by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Malaysia is also a party to the Patent Cooperation Treaty (PCT) and the Madrid Protocol. Patent and trademark applicants may use these international systems for filing international patent and trademark applications for acquiring protection in Malaysia. Trademark registration is valid for ten years from the date of application and may be renewed every ten years.

Copyrights are protected in Malaysia without any registration requirements. However, a copyright owner may register the copyright by filing a Copyright Voluntary Notification at MyIPO. An official certification of registered copyright may serve as prima facie evidence of the particulars of the registered copyright, and is admissible in all courts in Malaysia.

Malaysia protects geographical indications (GIs) through the Geographical Indications Act 2000. GIs registration is not compulsory, and protection will still be available to GIs regardless of whether the GI has been registered. However, the certificate of registration is a prima facie evidence of the fact stated in the certificate and the registration’s validity. A registered geographical indication is given ten years of protection from the date of filling and may be renewed every ten years.

Malaysia is not a member of the International Convention for the Protection of New Varieties of Plants (UPOV). However, Malaysia has the Protection of New Plant Variety (PNPV) Act administered by the Department of Agriculture (DOA). The Act provides some protection for plant breeder’s rights, but it does not comply with the UPOV standards.

Trade secrets, such as data, formulas, or other confidential information used in business, may be protected in Malaysia, if the owner provides appropriate measures to maintain the secrecy. While Malaysia maintains the efforts in the enforcement of intellectual property rights (IPR), the quantity of counterfeit and pirated goods remains high, especially in the physical markets. The Petaling Street Market in Kuala Lumpur is listed in the USTR Notorious Markets Report released in 2020. Plaza GM and Tamaran Johor Jaya are also mentioned as the area with widespread counterfeiting and piracy in the report.

In Malaysia, the Intellectual Property Courts consisting of fifteen (15) Sessions Courts with criminal jurisdictions, and six (6) High Courts with both civil and appellate jurisdictions were established in 2007. An appeal can be made to the Court of Appeals and, on limited grounds, to the Federal Court.

IPR owners need to be aware if their products/services are being counterfeited. IPR related disputes can be complex. Therefore, if a legal action is necessary, IPR owners are strongly recommended to seek advice from local attorneys who are experts in IP laws and litigation. It is also recommended that small and medium-sized companies understand the importance of working together with trade associations and organizations to support efforts in protecting IP and stop counterfeiting.

(Source: International Trade Administration , 08 Sep 2021)

Source Link: https://www.trade.gov/knowledge-product/malaysia-limitations-selling-us-products-and-services