1.Preliminary Advice and Search Application

Preliminary Advice and Search Application:

The initial step involves filing a preliminary advice and search application (Form TMA1) with MyIPO. This phase aims to seek preliminary advice or opinion from the Registrar of the Intellectual Property Office.

Registrar’s Opinion:

If the Registrar deems the trademark likely to be registrable and compliant with all legal requirements, the applicant can proceed to the next step. The Registrar’s written opinion will serve as a supporting document for the trademark application.

2.Filing the Trademark Application

Submitting the Application:

At this stage, the applicant submits a trademark registration application to MyIPO by filing form TMA2A (with pre-approved listing) or TMA2B (without pre-approved listing).

Translation Requirement:

If the trademark includes non-Malay or non-English words, a certified English translation must be submitted within one month of the application.

3.Trademark Examination

Examination Types: MyIPO conducts two types of examinations:

Formality Examination:

• This verifies whether the application adheres to formality requirements pursuant to Section 23 of the Trademarks Act. Examples include ensuring all basic legal requirements are met, the application is properly filled out, and fees are paid. If not compliant, MyIPO may issue a provisional refusal.
  • Absolute Grounds for Refusal:
    • The trademark is not capable of being graphically represented.
    • Specific applications lack necessary protection details (e.g., color without Pantone code, sound without musical notes).
    • Lack of distinctiveness or recognizability.
    • Describes the product’s origin directly (excluding collective or certification marks).
    • Overly descriptive of product characteristics (e.g., using “Best Quality Rice” for rice).
    • The trademark is customary in the country or its common language (e.g., using “Supermarket” for a retail store).
  • Additional Grounds:
    • Causing public confusion.
    • Deceptive or misleading.
    • Not in the public interest.
    • Offensive or abusive.
    • Violating national security.
    • Using personal names without consent.
    • Using national flags or symbols.
    • Using chemical names (e.g., “H2O” for water-related products).
      
• Substantive Examination:
• The Registrar assesses whether the trademark is identical or similar to existing trademarks under Section 24 of the Trademarks Act (relative grounds for refusal). If objections arise, applicants must provide a written explanation justifying non-infringement.

4.Trademark Publication

Publication: MyIPO publishes the trademark in their journals if there are no objections or oppositions.

Legal Protection: Once registered, the trademark is protected for 10 years from the application filing date with MyIPO.

Registering a trademark in Malaysia involves several detailed steps that require careful attention. By understanding these stages and preparing the necessary documents, applicants can ensure a smoother registration experience.

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Originality

To qualify for copyright protection, a work must be original. This means it must originate from the author and involve some degree of creativity, even if minimal.

Duration of Protection

The duration of copyright protection varies depending on the type of work:

• Literary, musical, and artistic works: The lifetime of the creator plus 50 years after their death.
• Films and sound recordings: 50 years from the date of creation.
• Broadcasts: 50 years from the year the broadcast took place.

Exclusive Rights:

The copyright owner has exclusive rights to reproduce, distribute, perform, and display the work. They can also create derivative works based on the original.

Moral Rights:

Creators have the right to be identified as the author of the work and to object to any derogatory treatment that may harm their reputation.

Fair Use:

Certain uses of copyrighted material are allowed without permission, such as for research, criticism, news reporting, and teaching, provided it is done fairly and does not harm the market value of the work.

Enforcement:

Copyright infringement can lead to legal action, including fines and imprisonment. The Malaysian Copyright Act 1987 provides the legal framework for enforcing copyright.

Why is Copyright Important?

• Encourages Creativity: By protecting creators’ rights, copyright laws encourage the creation of new works.
• Economic Benefits: Creators can monetize their works, contributing to the economy and fostering innovation.
• Cultural Preservation: Copyright helps preserve cultural heritage by protecting artistic and literary expressions.

What Constitutes Copyright Infringement in Malaysia?

Copyright infringement occurs when someone uses a copyrighted work without the permission of the copyright holder, violating the exclusive rights granted to the owner. In Malaysia, copyright infringement can take various forms. Here’s a detailed look at what constitutes copyright infringement:

1. Unauthorized Reproduction

• Copying or reproducing a work, such as making photocopies of a book or duplicating a CD, without the copyright owner’s consent.

2. Distribution Without Permission

• Distributing copies of the copyrighted work, whether for sale or free of charge, without authorization. This includes sharing digital files through the internet or other electronic means.

3. Public Performance

• Performing a copyrighted work in public without permission, such as playing music in a public venue or screening a film without a license.

4. Public Display

• Displaying a copyrighted work publicly without the owner’s consent. This includes showing photographs, paintings, or other visual works in public spaces.

5. Creating Derivative Works

• Making adaptations or derivative works based on the original, such as translating a book into another language, making a movie adaptation of a novel, or creating remixes and mashups of music, without permission.

6. Digital Infringement

• Downloading or uploading copyrighted material without authorization, such as movies, music, software, or e-books, from or to the internet.
• Streaming copyrighted content from unauthorized sources.

7. Circumventing Technological Measures

• Using tools or methods to bypass digital rights management (DRM) or other technological protection measures designed to prevent unauthorized use of copyrighted works.

In summary, copyright in Malaysia provides essential protection for creators, fostering a vibrant and innovative cultural landscape. By understanding and utilizing copyright laws, creators can ensure their works are respected and valued.

Legal Consequences of Copyright Infringement

In Malaysia, copyright infringement is taken seriously, and the consequences can be severe. Under the Copyright Act 1987, infringers may face:

• Civil Penalties: The copyright owner can file a lawsuit seeking damages, injunctions to stop the infringing activities, and account for profits incurred.
• Criminal Penalties: Infringement can also lead to criminal charges, resulting in fines, imprisonment, or both, depending on the severity and nature of the infringement.

Conclusion

Understanding and adhering to the principles of copyright in Malaysia is essential for both creators and users of creative works. These principles ensure that creators can protect and benefit from their creations while balancing the public’s access to knowledge and cultural resources.

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Different Objective for Protection

Here’s a quick guide to help you understand the three main types:

Trademarks refer to visible signs that merchants use to distinguish their goods or services from others, marked on goods or services.
Copyrights, also known as authors’ rights, refer to the total legal rights and moral rights that an author legally enjoys for their own works.
Patents record the content of inventions and creations. The use of a patented invention or creation requires the permission of the patent holder.

• Trademarks protect words, graphics, letters, numbers, three-dimensional marks, movements, sounds, smells, color combinations, or slogans marked on goods. The protection period is 10 years.
• Copyrights protect literary, musical, dramatic, pictorial, sculptural, or photographic works of the author. The protection period is the author’s lifetime plus 50 years after death.
• Patents protect the invention of a technology, such as Bluetooth technology or infrared technology in mobile phones. The protection period is 20 years.

Trademarks Act 2019: Legal Rights

A registered trademark is extremely important to a business’s reputation and economic benefits. A legally registered trademark has the right to take legal action against infringers.

• Civil Aspects: The court may gives awards for infringement, destruction of infringing marks or products, injunctions, and recovery of all commercial losses and profits.
• Criminal Aspects: The infringer may be fined or imprisoned.

Legal Requirements for Trademark Registration

Trademarks Act 2019:
Section 23 Absolute Grounds of Refusal

• The trademark is not capable of being graphically represented;
• Specific applications lack details of the protection: for example, registering a color without specifying the Pantone code or registering a sound without submitting musical notes;
• Lack of distinctiveness;
• Lack of recognizability;
• Describes the origin of a product (except for collective and certification marks);
• Overly descriptive of product characteristics, leading to a lack of distinctiveness, such as using the quantity, quality, purpose, value, or production area of the product directly as the trademark;
• The trademark is considered customary in the country or its common language.

Additional Grounds Include

• Causing public confusion;
• Deception or misleading;
• Not in the public interest;
• Offensive or abusive;
• Violating national security;
• Using personal names;
• Using national flags or other national symbols;
• Using any chemical names.

Trademarks Act 2019:
Section 24 Relative Grounds of Refusal

If a trademark meets basic requirements but there is an identical or similar trademark already applied for in the same or related product category, the Registrar has relative refusal rights.

If the above issues are violated, the Registrar can issue a Provisional Refusal under Trademarks Act 2019, allowing the applicant to variation or explanations.

If still unacceptable, the Registrar will issue a Total Refusal. It is recommended that businesses conduct a Preliminary Advice Search before applying for trademark registration to prevent conflicts with existing trademarks.

Publication

If the trademark application is in order, the Registrar will formally publish the trademark according to Section 31 of Trademarks Act 2019.

Trademarks Act 2019:
Section 34 & 35: Opposition

Even after a trademark is successfully published, prior proprietor can file opposition if they believe the published trademark potentially infringe with their already registered trademark, temporarily blocking the publication. Opponents can cite reasons under Trademarks Act 2019 Section 23 & 24 for their opposition, leading to the Registrar’s judgment.

Opponents can also appeal the Registrar’s decision to the court.

By understanding these key points, you can better navigate the complex world of intellectual property and ensure your brand, creations, and innovations are well protected.

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