What is a trademark?

Any sign that serves to distinguish the products or services of a specific person or enterprise from those of other persons or enterprises. 

A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. A trade mark can be represented graphically in the form of your company’s logo or a signature.

What can be registered as a trademark?

Trademarks can consist of any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.

It should not be descriptive, deceptive or praising of the goods or services. Trade marks which are descriptive of the character or quality of the goods or services for which they are used are difficult to register. The same applies to marks which are surnames or refer to geographical areas.

What is the general procedure to register a trademark?

The general procedure to register a trademark is to perform trademark availability search, filing trademark application and 2 months of gazette (advertisement) before the issuance of Certificate of Registration. For more details, please refer to flowchart for trademark registration procedure in Malaysia. 

What is the duration to perform the trademark search?

A duration of less than one week to perform trademark availability search upon trademark search request by our valued customers. We will provide a search report pertaining to the availability of the proposed trademark.

What are the documents / information required to proceed trademark application after conducted trademark search?

The following documents are required to proceed trademark application:

i)  If the applicant is company:

• copy of company registration documents, Form 9 and 49 and softcopy of verbal/figurative trademark (if any).

ii) If the applicant is sole proprietor / partnership:

•  copy of business registration documents, Form D & Details and softcopy of verbal/figurative trademark (if any).

iii) If the applicant is individual:

• copy of the individual’s Identity Card (IC) and softcopy of verbal/figurative trademark (if any). 

What categories of products and services which the trademark to be registered?

The applicant has to identify which products or services he wants to protect the trademark within the international classification of products and services (Nice Classification). This classification organised the products and services into different classes. It is divided into 45 classes. Products are classified under classes 1 to 34 and services under classes 35 to 45.

How long does the trademark protected once is registered?

Once registered, a trademark is valid for a period of 10 years from the date of registration (the date on which the trademark is applied for), and thereafter can be maintained indefinitely subject to renewals once every-ten years.

What is a patent?

A patent is a set of exclusive rights granted by a government to an inventor or applicant for a limited amount of time.

What is a utility innovation?

A utility innovation is an exclusive right granted for a "minor" invention or improvement to product which does not require to meet the inventive step or non-obviousness as required of a patent.

What can be registered/is patentable?

To obtain a valid patent, the invention must be new (novel), involve an inventive step or be non-obvious, and be capable of industrial application.

An invention is considered new if it does not form part of the state of the art. The state of the art comprises everything that is known or used in public in any way, anywhere in the world, before the date of filing of the patent application. An invention is considered as involving an inventive step if it is not obvious to a skilled person having regard to the state of the art. The invention must be capable of being made or used in some kind of industry.

What is the general procedure to apply a patent?

The general procedure to register a patent is to perform patent novelty search, patent drafting, and patent filing.  

What is the duration to perform the patent novelty search?

A duration of less than two weeks to perform patent novelty search upon patent search request and sufficient disclosure of invention provided by our valued customers. We will provide a patent novelty search report pertaining to the patentability of the proposed invention.

What are the documents/information required to proceed patent drafting and filing after conducted patent novelty search?

Detailed information or filled invention disclosure form regarding the invention has to be provided by our valued customer for preparing a patent draft which complying particular format and rules. After the patent draft is finalized, applicant’s name and address (company or individual) has to be provided to proceed patent filing.

How long does the patent/utility innovation protected once is granted?

Once granted, a patent is valid for a period of 20 years from the date of registration (the date on which the patent is applied for), and thereafter can be maintained subject to renewals once a year from the date granted. A utility innovation is valid for for ten (10) + five (5) + five (5) years from the date of filing subject to use.

Is a patent granted in Malaysia or any other country protected worldwide?

No. Patent is solely protected under particular territory. After the patent has been filed in a country such as Malaysia, the patent has to be filed in another country sought for protection within a grace period of twelve months from the date of filing in Malaysia to claim its priority filing date. Alternatively, the patent can be filed to receiving office under the patent cooperative treaty (PCT) which provides 30 months from the date of filing in the country before extended to particular individual country. 

What is an industrial design?

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features such as the shape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. The design features must be applied to an article by any industrial process or means of which the features in the finished article appeal to eye.  

What features are NOT eligible to be protected under industrial design right?

(a) A method or principle of construction.

(b) The features of the article are dictated solely by function

(c) The features of the article depend upon the appearance of the other article

      which forms an integral part of that article.

(d) It differs only in immaterial details or features.

(e) The features of the article do not have a clear aesthetic appearance. 

What is the general procedure to register an industrial design?

The general procedure to register an industrial design is to perform industrial design search, industrial design application and industrial design registration.  

What is the duration to perform the industrial design search?

A duration of less than one week for PatenTMaste® to perform industrial design search upon industrial design search request by our valued customers. We will provide a search report pertaining to the registrability of the proposed industrial design.

What are the documents required to proceed industrial design application after conducted industrial design search?

The following documents are required:

i)  If the applicant is company:

• company registration documents Form 49 & 9, copy of endorsed Statement Justifying Applicant's Right to the registration and softcopy of  representation of the article to which the design is applied (drawings or photograph).

ii) If the applicant is individual:

• copy of the individual’s identification (ID) card, copy of endorsed Statement Justifying Applicant's Right (if the applicant is not the author) and softcopy of representation of the article to which the design is applied (drawings or photograph).

What categories of goods which the industrial design is applied to be registered?

The applicant has to identify which goods to which the design is applied within the international classification (Lorcano Classification). This classification organises the goods into different classes and subclasses. Basically, it is divided into 32 classes.

How long does the industrial design protected once is registered?

Once registered, a registered industrial design is given an initial protection period of 5 years from the date of filing and is renewable for a further four consecutive terms of 5 years each.

What is a copyright?

Copyright is a legal right, enacted by government, giving the creator of an original work exclusive rights to it for a limited time. 

How to copyright and prove as an ownership?

Creative industry players can register their works with the Intellectual Property Corporation of Malaysia (MyIPO) to prove ownership under the Copyright Voluntary Notification System.

Who is eligible to file the Voluntary Notification?

A Voluntary Notification can only be filed by a Malaysian citizen or a permanent resident of Malaysia. The author of the work is eligible for copyright in Malaysia. The copyright proprietor, assignee of the copyright or a licensee of the copyright who is not a Malaysian citizen or a permanent resident of Malaysia can appoint a representative who is a Malaysian citizen or a permanent resident of Malaysia to file the Voluntary Notification on his behalf.

What are the procedures/documents required to file the Voluntary Notification?

The documents below are required for filing a Voluntary Notification:

1. A statutory declaration affirming that the Applicant is the author of the work eligible for copyright in Malaysia (the “Work”), the copyright proprietor, assignee of the copyright or a person granted with an interest in the copyright;

2. A copy of the Work;

3. The following details are required to provide:

a. name, address, telephone and telefax numbers, email and nationality of the copyright proprietor;

b. name, address, telephone and telefax numbers, email and nationality of the author (if the author is dead, the date of the author’s death, if known);

c. name, address, telephone and telefax numbers, email and nationality of the assignee/licensee;

d. name, address, telephone and telefax numbers, email and nationality of the contact person;

e. title of the Work in original language, if it is in a language other than the national language of Malaysia and English, to provide its translation, transliteration and the type of language;

f.  category of the Work, whether it is literary work, musical work, artistic work, film, sound recording or broadcast;

g. person making the declaration whether he is the author, proprietor or licensee, (if he is the licensee, sufficient supporting documents shall be provided);

h. in the case of a published work, the date and place of the first publication as well as the year of compilation; and

i.  in the case of derivative work, the previous title as well as the type of derivative work, i.e. whether it is a translation, adaptation, arrangement, collection of work and compilation of mere data or other transformation of works eligible for copyright.

How long does the copyright last?

Literary, Musical or Artistic Works

- copyright subsists during the life of the author and 50 years after his/her death. If a work has not been published during the lifetime of the author, copyright continues to subsist until the expiration of 50 years, following the year in which the work was first published. In the case of a work with joint authorship, the life of the author who dies last is used for calculating the copyright duration of the work.

Sound Recordings

- copyright subsists until the expiry of a period of 50 years from the beginning of the calendar year next following the year in which the recording was first published or, if the sound recording has not been published, from the beginning of the calendar year following the year of fixation.

Broadcasts

- copyright subsists until the expiry of a period of fifty years from the beginning of the calendar year next following the year in which the broadcasts was first made.

Films

- copyright subsists for a period of fifty years from the beginning of the calendar year next following the year in which the film was first published or first made available to the public or made, whichever is the last.

Government Works

- copyright subsists until the expiry of a period of fifty years computed from the beginning of the calendar year next following the year in which the work was first published.