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.

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 The TDA 2011 repealed the Trade Descriptions Act 1972.

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.

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.

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.

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.

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.

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.

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.

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.

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).

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

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

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.

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 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.

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.

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

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.

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.

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.

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.

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.

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

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).

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.

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.

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.