The congkak is a mancala or “count-and-capture” traditional game that is popular in Malaysia. We have a passion for learning, knowledge and ideas that enhance our analytical, creative and strategic skills; the same qualities that are commonly associated with skilled congkak players. We believe in knowledge-sharing to help our clients stay at the forefront of industry trends and developments.

News & Insights

Disclaimers:
Kindly note that the information provided in this website is of a general nature and is not intended for application to any specific scenario. We disclaim all liability in connection with the use of or any reference made to the information contained in this website. For legal advice and more information, kindly contact us directly.

Personal Data Protection Act 2010

  • Came into force on 15 November 2013

Trade Marks (Amendments) Regulations 2011

  • Came into force on 15 February 2011

Competition Act 2010

  • Came into force on 1 January 2012

Industrial Designs (Amendment) Regulations 2012

  • Came into force on 15 February 2012

Copyright (Voluntary  Notification) Regulations 2012

  • Came into force on 1 June 2012

Copyright (Amendment) Act 2012

  • The Copyright (Amendment) Act 2012 substantially amends the Copyright Act 1987.
  • It came into force on 1 March 2012.

Trade Descriptions Act 2011

  • The Trade Descriptions Act 2011 repeals the Trade Description Act 1972.
  • It came into force on 1 November 2011.

Limited Liability Partnerships Act 2012

  • The Limited Liability Partnerships Act 2012 is an act that provides for inter alia the registration, administration and dissolution of limited liability partnerships.
  • It came into force on 26 December 2012.

11th Edition of Nice Classification of Goods & Services

  • Malaysia adopted the 11th edition of the Nice Classification of Goods and Services on 1 January 2017

Knowledge Bank

NOVITAS September 2017

We look at the recent enforcement of the Personal Data Protection Act 2010, we discuss the High Court decision of Philip Morris Brands Sarl v. Goodness for Import and Export & 4 Ors and we take a look at the recent High Court decision on the patentability of Swiss-type claims used for medical treatments… Read more

GETTING THE DEAL THROUGH: Patents 2017 by Teo Bong Kwang, Boo Min Lee & Koo Yen Cheng

Getting the Deal Through provides an international expert analysis in the areas of law, practice and regulation for corporate counsel, cross-border legal practitioners, and company directors and officers. Read more

Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Patents 2017, (published in March 2017; contributing editor: Richard T McCaulley Jr, Ropes & Gray LLP) For further information please visit https://gettingthedealthrough.com/area/25/patents-2017

NOVITAS March 2017

In this issue, we discuss the registrability of 3D marks in Malaysia and the protection of trade names. We also look at how to accelerate the patent examination process with ASPEC and PPH… Read more

WJNT UPDATE 2016

The Federal Court Considers The Law On Passing Off In Extended Form & Application Of The Geographical Indications Act 2000… Read more

NOVITAS 2016

In this case summary, we look at the issues of expungement of a trade mark and copyright infringement and the factors in which the court takes into consideration in coming to a decision on these issues…. Read more

THINGS TO KNOW ABOUT DATA EXCLUSIVITY IN MALAYSIA

It is noted that one of the highlights in the IP Chapter of the TPPA is that of data exclusivity. We explore what provisions are available in Malaysia … Read more

FAQ

Trade Description

What is a Trade Description?

A trade description is a direct or indirect indication with respect to goods. This is relevant for counterfeiting cases where the use of a trade mark without the consent of the proprietor of the trade mark on a product is an offence i.e. it is deemed a use of a false trade description.

What act governs offences in relation to the use of a false trade description?

It is governed by the Trade Description Act 2011 (“TDA 2011”). The TDA 2011 repealed the Trade Descriptions Act 1972.

What actions can be taken under the TDA 2011?

The TDA 2011 empowers the officers of the Enforcement Division of the Ministry of Domestic Trade, Consumerism and Co-operatives (“ED”) to conduct search and seizure of premises suspected to be selling and supplying counterfeit goods. The TDA 2011 also deems possession of counterfeit products to be an offence.

How do I institute an action?

A complaint can be made to the ED based on the brand owner’s registered trade mark or if the brand owner is in possession of a trade description order.

What is a trade description order?

A trade description order (“TDO”) is a court order obtained from the High court for a declaration that products bearing an infringing mark are a false trade description. A TDO is useful as conclusive proof that the use of a false trade description on a product is a use without authority.

What are the penalties?

A corporation is subject to a fine not exceeding fifteen thousand ringgit for each goods bearing the false trade description. For a second or subsequent offence, a corporation is subject to a fine not exceeding RM30,000 (thirty thousand ringgit) for each goods bearing the false trade description. If an offence is committed by a person, the person is subject to a fine not exceeding RM10,000 (ten thousand ringgit) for each goods bearing the false trade description or to imprisonment for a term not exceeding three years or to both. For a second or subsequent offence, to a fine not exceeding RM20,000 (twenty thousand ringgit) for each goods bearing the false trade description, or to imprisonment for a term not exceeding five years or to both.

Trade Mark

What is a trade mark?

A trade mark may be a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. A trade mark is used by a person in the course of trade for the purpose of distinguishing his goods or services from those of other traders.

Why should I register a trade mark?

By registering a trade mark, you will have the exclusive right or a monopoly over the use of the trade mark. You will be able to stop third parties from using an identical or even a confusingly similar trade mark.

What can I register?

A trade mark is registrable if it consists any of the following:-

  • Name of individual, company or firm represented in a special manner;
  • Signature of the applicant;
  • An invented word(s);
  • A word having no direct reference to the character or quality of the goods or services, not being a geographical name or surname; or
  • Any distinctive mark, which is capable of distinguishing your goods or services from those of other traders.

How long does it take to register a trade mark in Malaysia?

It will take approximately 12 to 18 months to register a trade mark (where no office action, objections or opposition is raised). Otherwise, it will take longer.

How long does a trade mark registration last?

A trade mark registration will last for 10 years from the date of application (or priority date if the application is based on a priority claim).

What happens when it expires?

A trade mark registration is renewable every 10 years. It is recommended that the trade mark registration be renewed before the registration expires.

Can I use my trade mark before the mark is registered?

Yes, you may use your trade mark in respect of the goods or services before the mark is registered.

What is the difference between TM and ®?

Putting a TM after your trade mark indicates that you are using your trade mark as a trade mark. Putting a ® after your trade mark indicates that your trade mark is a registered trade mark. Please note however that it is an offence under the Malaysian Trade Marks Act 1976 to falsely represent a trade mark as registered.

Once registered, can I stop other people from using my mark anywhere in the world?

No. Trade mark rights are territorial. If your trade mark is registered in Malaysia you are only entitled to enforce your rights in Malaysia. If you wish to protect your mark overseas, you will have to register your mark in the country that you wish to protect.

Copyright

What is copyright?

Copyright are proprietary rights subsisting in works created by authors. Copyright is usually owned by the author or if the author created the work in the course of his or her employment, by the employer of the author. The owner of the copyright enjoys exclusive rights to control the many ways in which the work may be exploited, including to copy, to perform and to distribute the same.

Why is it important for copyright to be protected?

The law protects copyright to encourage development of arts and science as well as to ensure authors are reasonably remunerated for their efforts in creating an original work.

What are examples of works protected by copyright?

Copyright protects literary, artistic, musical and dramatic works. Copyright also protects sound recordings, published editions, films, broadcasts and performer’s rights.

What are the pre-requisites for a work to be protected by copyright?

Generally, a work is protected if it is original and has been reduced to material form (i.e. written down or recorded). A work is deemed original as long as it originates from the author’s own efforts and has not been copied. However, the author must have expended sufficient skill and effort to produce the work.

What can I do to ensure my copyright is protected?

There is no formal requirement for the work to be registered in order for copyright to be claimed or recognised. Copyright is conferred so long as the prerequisites are satisfied.It should be noted that the Copyright (Amendment) Act 2012 that came into force on 1 March 2012 does provide for a “voluntary notification of copyright”. In brief, a copyright proprietor may file a notification of proprietorship that will be kept in a Register of Copyright.To claim copyright ownership (i.e. to forewarn infringement), a notice with the symbol © may also be placed in/on the work followed by the name of the owner and the year of first publication.

For how long can copyright be protected?

Copyright protection is not perpetual. Generally the Malaysian Copyright Act 1987 grants copyright subsistence (i.e. for literary, musical or artistic works) during the life of the author plus 50 years after his or her death. For unpublished works, copyright shall subsist for 50 years from the beginning of the calendar year following the publication date.

Industrial Design

What is an industrial design?

An industrial design means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, and such features in the finished article appeal to and are judged by the eye but do not include:

  • A method or principle of construction; or
  • Features of shape or configuration of an article which:
    • Are dictated solely by the function which the article has to perform; or

Are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Why should I register an industrial design?

By registering an industrial design, you will have the exclusive right to make, to sell, import for sale or hire or use for the purposes of any trade or business the industrial design. You will be able to stop third parties from using an identical, or fraudulent or obvious imitation of the registered industrial design.

How long does it take to register an industrial design in Malaysia?

It will take approximately 8 – 10 months to register an industrial design (where no office action, objections is raised). Otherwise, it will take longer.

How long does an industrial design registration last?

An industrial design registration will last for 5 years from the date of application (or priority date if the application is based on a priority claim).

What happens when it expires?

An industrial design registration can only be extended for 4 consecutive terms of 5 years each after its first expiry.  An industrial design registration can thus only be protected for a maximum period of 25 years.

Can I use my industrial design before an application is filed?

No, you cannot use your industrial design before an application is filed as the novelty of the design will be compromised if you do so.

Once registered, can I stop other people from using my industrial design anywhere in the world?

No, industrial design rights are territorial. If your industrial design is registered in Malaysia, you are only entitled to enforce your rights in Malaysia. If you wish to protect your industrial design overseas, you will have to register your industrial design in the country that you wish to protect.