Trademarks

The primary legislation in Malaysia governing trademarks is the Trademarks Act 2019. The 2019 law repealed the Trade Marks Act 1976, and in addition to conventional trademarks already protected under the repealed act, the 2019 law expands the nature of marks that may be registered to include non-traditional trademarks such as the shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.  

Malaysia acceded to the Madrid Protocol on December 27, 2019, and in line with the accession, the Trademarks Act 2019 introduced various new provisions including, amongst others, international trademark filings and multi-class applications.

The Trademarks Act 2019 has not been amended to date. The Trademarks Regulations 2019, Trademarks (Compounding of Offences) Regulations 2020, and Trademarks (Waiver and Modification of Fee) Regulations 2020 are the subsidiary legislation of the Trademarks Act 2019 introduced as at the date of writing. The Guidelines of Trademarks 2019 and the Guidelines on Trademarks (Transitional Matters) 2019 have also been published pursuant to Sections 160 and 183, respectively, of the Trademarks Act 2019.

Registrability and scope of protection

Malaysia is a first-to-use jurisdiction. Rights in a trademark can arise through common law use, enforced via the tort of passing off, provided the owner establishes goodwill, misrepresentation and damage. However, registration remains the essential element to secure stronger statutory protection, confer rights and facilitate enforcement. 

Registrable marks now include words, names, signature, letters, numerals, devices, brands, labels, colours, shapes, sounds or combinations thereof, provided they are capable of distinguishing goods or services. Mark that are descriptive, generic, misleading or contrary to public morality are excluded from registration. 

Registration confers on the proprietor exclusive rights of use of the trademark subject to any conditions, amendments, modifications or limitations entered against the trademark on the Register. The “registered user” concept under the repealed act is now abolished. Instead, the 2019 law introduces trademark licensing provisions to govern uses of trademarks by persons other than the registered proprietor.

The Trademarks Act 2019 also provides enhanced protection for well-known marks, including those not registered in Malaysia which ensure international brand owners can act against misappropriation of reputation even without local fillings. 

Application and examination process

Trademark applications are filed with the MyIPO directly or through the WIPO designating Malaysia, for international applications. The process typically involves examination on absolute and relative grounds, publication in the IP Official Journal and an opposition period for third party within two months. Upon successful, the mark proceeds to registration. 

Duration and renewal

Once a mark is registered, the trademark is valid for 10 years from the filing date and can be renewed indefinitely in further 10-year periods. Non-use of a registered mark for three continuous years may expose it to revocation. 

Infringement

A registered trademark is infringed if a party uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor, or if without the consent of the proprietor of the trademark, a party uses in the course of trade a sign (a) that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or (b) that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.

Patents

Patent protection in Malaysia is governed by the Patents Act 1983. The act provides for the registration of inventions that are new, involve an inventive step and are capable of industrial application. An invention may relate to either a product or a process. Generally, an invention may relate to a product or process. Certain number of subject matters are excluded, including discoveries, scientific theories, mathematical methods, plant or animal varieties, schemes, rules or methods for doing business, performing purely mental acts or playing games, and methods for the treatment of human or animal body by surgery or therapy. 

Rights conferred

The Patents Act grants the patent owner a monopoly to exploit the invention. Infringement occurs if another party, without authorization, engages in acts under the exclusive rights of the owner, including making, importing, offering sale, selling or using the patented products or process. 

Application, filing and refusal of grant

Patent applications are filed with the Intellectual Property Corporation of Malaysia (MyIPO) in the prescribed form and with payment of the required fees. Applications may be submitted in English or Malay, which are accepted languages for filings. The application must also include a request for the grant of a patent, a description of the invention, any necessary drawing and abstract. Once filed, the application is subject to formality checks followed by examination to ensure that the invention meets the requirements of novelty, inventive step and industrial applicability. 

The grant of a patent can be refused by the Patent Office if the performance of any act in respect of the claimed invention is contrary to public order or morality. The Patents Act 1983 is implemented through the Patents Regulations 1986. Both the act and the regulations were revamped considerably by the Patents (Amendment) Act 2022 and the Patents (Amendment) Regulations 2022, respectively.

Duration of protection

The duration of a patent registration is generally 20 years from filing date of application, subject to payment of prescribed annuity fees. 

Malaysia also protects utility innovations (UI). A UI is granted protection 10 years from the filing date, subject to renewal fees. The owner may apply for a first five-year extension before the 10th year, and a second five-year extension before the end of the first extension. This allows a maximum 20 years of protection.  

Copyright 

Copyright protection in Malaysia is governed by the Copyrights Act 1987. The legislation has been amended several times, including in 1990, 1999, 2000, 2003, 2012 and 2020, to keep pace with international standards and technological developments.

Unlike trademarks and patents, copyright protection arises automatically upon the creation of a qualifying work and there is no requirement for registration. Under the amendments to the act introduced in 2012, a voluntary notification system by the rights holder was introduced.

Malaysia is a signatory to several international agreements, including the Berne Convention (acceded in 1990), the TRIPS Agreement (1994), the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), both effective from 2012.

Protected works

Copyright subsists automatically in original works where sufficient effort has been expended to make the work original in character, and the work has been reduced to material form. Protected works include literary, musical and artistic works, films, sound recordings and broadcast, derivative works such as translation and compilations of data and live performances (which was introduced as performers’ rights vide the amendment in 2000). Computer programs are also specifically protected as literary works. 

Rights of the copyright owner and infringement

Copyright owners enjoy exclusive control over their works. These include the right to reproduction of the work in any material form, the right to perform, show or play it to public, the right to communicate and distribute it to the public, the right to translate it or adapt it, and the right to commercially rent it. Any unauthorized performance of these acts constitutes infringement. 

The act further prescribes criminal offenses for, among others, the manufacture, sale, offer for sale, hire, distribution, possession and importation of infringing copies. This is enforced by the Enforcement Division of the Ministry of Domestic Trade and Cost of Living.

Duration of protection

The duration of copyright protection varies depending on the type of the works. Literary, musical and artistic works are given protection for the life of author plus 50 years upon death. Secondary works such as films, sound recordings and broadcasts, are given 50 years, calculated from the year of first publication or, if unpublished, from the year following fixation. 

Voluntary notification

Although registration is not required, the Copyright (Amendment) Act 2012 introduced a voluntary notification system. Copyright holders may file a Copyright Voluntary Notification (CVN) with the MyIPO to obtain prima facie evidence of ownership and the date of creation, which is invaluable for enforcement proceedings. 

Recent amendments and modern developments

The 2012 amendments introduced additional anti-camcording provisions which prohibits the recording of films with a camcorder in a screening room. It also imposed liabilities on internet service providers (ISPs) where copyright owners can notify an ISP of infringing material hosted on its network and the ISP is obliged to remove or disable access within 48 hours, provided the notice includes an undertaking to indemnify the ISP against liability. The amendments further expanded powers to the Copyright Tribunal, which can now hear disputes relating to royalties between licensing bodies and their members as an alternative dispute resolution mechanism. 

The 2020 amendments provided additional powers to the existing Copyright Tribunal, empowering the tribunal to hear any disputes relating to royalties arising between a licensing body and any of its members subject to their agreement, as an alternative dispute resolution option.

Collective management

Copyright management in Malaysia is also facilitated by collective management organizations, which license works and collect royalties on behalf of rights holders. Among the most prominent are the Music Authors’ Copyright Protection (MACP) and the Public Performance Malaysia (PPM), where both play an important role in ensuring authors and performers receive proper remuneration for the use of their works. 

Industrial designs

Industrial Designs in Malaysia are governed by the Industrial Designs Act 1996. An industrial design is defined as the features of shape, configuration, pattern or ornaments applied to an article by an industrial process or means, where such features appeal to and judged by the eye. To qualify for protection, the design must be new, which means it must not have been disclosed to the public anywhere in Malaysia or elsewhere before its priority date, nor been the subject of an earlier industrial design application. 

Rights conferred

The proprietor of a registered industrial design has the exclusive right to make or import for sale, hire or use in trade or business any article to which the registered design has been applied. Any unauthorized performance of these acts constitutes infringement of the registered design. 

Duration of protection

The initial term of registration for an industrial design is five years from the date of filing. Following amendments that came into force in July 2013, this term may be extended for four consecutive terms of five years each, giving a maximum protection period of 25 years. The extended protection applies not only to new registrations but also design registered before July 1, 2012, subjected to exceptions for certain designs registered in the United Kingdom before September 1, 1999, under the saving provision in Section 49 of the act. 

Dealings in industrial designs

A registered industrial design may be the subject of a security interest and is treated in the same way as other personal or movable property. 

Assignments, transmission or transfer of ownership in respect of a registered design or an industrial design application must be recorded in the Industrial Designs Registers to be effective against third parties, failure of which may be fatal to the rights of the owner.

In the event of infringements proceedings, the court may refuse to award costs to a design owner who has acquired rights by assignments, transmission, operation of law, or security interest transfer unless an application to record the new ownership is made within six months of relevant transaction, or unless the court is satisfied that the application was filed as soon as practicable. 

IP enforcement

IP enforcement mechanisms in Malaysia differ depending on the type of intellectual property right, with distinct provisions under the Trademarks Act 2019 and the Copyright Act 1987 providing both civil and criminal remedies and the Patents Act 1983 and the Industrial Designs Act 1996 providing civil remedies against infringements.

Trademarks

Trademark owners may enforce their rights through civil proceedings under the Trademark Act 2019. They may seek remedies such as injunctions, damages, an account of profits and delivery up of infringing goods from a court of law. The courts also have discretion to award additional damages where appropriate. 

As for criminal proceedings, it arises in cases of counterfeiting, falsely applying a registered trademark, making or processing articles for infringement and importing or selling counterfeit goods. These offences are investigated and prosecuted by the Ministry of Domestic Trade and Cost of Living and in some instances, in collaboration with other enforcement authorities such as the Royal Malaysian Customs or the Royal Malaysian Police. Border enforcement is also available under Section 93 of the Trademark Act 2019, which provides customs officers ex-officio powers to detain suspected counterfeit goods. Challenges include distinguishing genuine from counterfeit products and resource limitations, but proactive measures such as MDT’s “Basket of Brands” programme and training initiatives help strengthen enforcement and raise the confidence level of brand owners. 

Whilst traditional enforcement actions against brick-and-mortar infringers are straightforward and trademark owners often do not face challenges, online and online-to-offline enforcement actions are fairly challenging at times, due to the decentralized, fast-moving, and often anonymous nature of the sellers. Several international bodies such as the International Trademark Association (INTA) have been working closely with the MDT, in line with INTA’s involvement in the ASEAN IPR Action Plan 2026–2035, to improve the working mechanisms of online-to-offline enforcement actions. Amongst others, the collaboration has sought to develop guidelines and policies that would further define requirements of ecommerce platforms to comply with electronic commerce regulations vis-à-vis protection of consumer rights.

Patents

Patent enforcement in Malaysia is primarily civil. Patent owners may commence action in the High Court and may seek injunctions, damages and any other legal remedy, such as interim or interlocutory reliefs that address imminent infringements. Invalidation proceedings may also be initiated by aggrieved parties in court where a granted patent does not meet the statutory requirements of novelty, inventive step or industrial applicability. Enforcement actions are based on patent registration and examination framework administered by MyIPO, which ensures that rights are clearly recorded and enforceable. There are no criminal remedies provided for by the Patents Act 1983.

Copyright 

Copyright enforcement is provided under the Copyright Act 1987, which contains both civil and criminal remedies. It provides civil remedies for, amongst others, reproduction or broadcasting of copyrighted works and prescribes criminal offences for the manufacture, sale, offer for sale, hire, distribution, possession and importation of goods that infringe copyright, the latter of which is enforced by Enforcement Division for Ministry of Domestic Trade and Cost of Living. 

The 2012 amendments added anti-camcording provisions and imposed obligations on internet service providers (ISPs) to remove infringing electronic copies within 48 hours of notice from copyright owners. However, online enforcement remains challenging due to anonymous sellers and lack of cooperation from intermediaries, but best practices include takedown requests and close cooperation with platforms. The 2020 amendments further strengthened the Copyright Tribunal by allowing it to resolve royalty disputes between licensing bodies and their members as an alternative to litigation. 

Industrial designs

Industrial design infringement actions lie in civil courts only, with remedies including injunctions to prevent or restrain infringement, damages and/or account of profits. When filing an action, it is crucial that the owner provides concrete documentary evidence of ownership; and where ownership is transferred but not recorded, the court may refuse to award costs in infringement proceedings unless the recordal is made within six months or as soon as practicable.