MALAYSIA
MALAYSIA
Prosecution of a design application now typically takes six to eight months. One notable trend has been for examiners to call agents with their objections rather than issue formal written official actions. Although this practice is doubtless well-intentioned, there is a concern that it forces applicants into hasty decisions, when they may be more inclined to accept an examiner’s verbal request or suggestion than to make a more measured response by way of written argument.
Further on the horizon are substantive changes under the Industrial Designs (Amendment) Act 2013 that received Royal Assent in January this year. These include a switch from local to worldwide novelty, extension of the term of protection from 15 to 25 years, and the formal recognition of a design registration as an asset that may be the subject of a security interest capable of being recorded in the register. MyIPO also plans to introduce official journals for patents, designs, trademarks and geographical indications to replace publication in the Government Gazette. It remains to be seen whether this move will lead to any reversal of the design publication fee increase.
Trademarks
2012 proved to be another healthy year on the Malaysian trademark front, generating an impressive number of applications and registrations. For the first time, we hit the 30,000 milestone, with 31,876 trademark applications being filed in combination by Malaysian and non-Malaysian trademark owners in the last 12 months. Of this grand total, 14,044 applications originated from local brand owners. This demonstrates an encouraging trend of higher awareness and more protective actions being taken by domestic brand owners to safeguard their trademarks.
Te number of registrations granted in the past year (26,076 registrations) is also the highest since 2008, a result of MyIPO’s continuing to expedite the trademark process with its new pool of hearing officers and better-trained examiners. Although Malaysians are becoming more active in seeking trademark protection, their choice of marks and branding strategies still need careful improvement, as only about 37 percent of their marks ultimately obtained registration, a drop from year 2011.
Copyright
While no new trademark laws came into effect in 2012, the Copyright (Voluntary Notification) Regulations took effect on June 01, 2012. Copyright owners can now voluntarily notify and deposit a copy of an eligible work (as recognised by the Copyright Act 1987) with MyIPO for recording. The notification shall contain details of owner, details of the author(s), a statutory declaration to assert the
the 88 World Intellectual Property Review e-Digest 2013
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applicant’s locus standi, and a copy of the work, and be accompanied by the prescribed fee.
Despite its voluntary nature, the notification does have a profound effect on admissibility of evidence because certified extracts from the register shall be prima facie evidence and admissible in the Malaysian courts. No doubt there are still no actual formalities to register copyright required locally because of automatic protection afforded by the Berne Convention. However, since most copyright owners have for years been demanding a more tangible form of protection similar to their trademark and patent peers, the new regulations can be seen as a fulfilment of these requests.
Geographical Indications
Lastly, there is a continuing call from MyIPO for more awareness on geographical indications (GI) protection because even though the laws have been in place since 2000, only 41 GIs have been filed and 22 registered in the last decade or so. MyIPO has taken the initiative to identify a few dozen potential Malaysian indications (for example, Tawau Cocoa, Babagon Pineapple, Pua Kumbu (cloth), Tembaga Ladang (handicraſt), Sempalit Nuts, Kedah Rice, etc) that can be explored and registered to reflect the country’s rich blessings from the land.
Dave A Wyatt is head of the patent department at Henry Goh. He can be contacted at:
dave@henrygoh.com
Lim Eng Leong is legal counsel at Henry Goh. He can be contacted at:
engleong@henrygoh.com
Dave A Wyatt is a UK chartered patent attorney, European patent attorney and registered Malaysian patent, industrial design and trademark agent. He is an active member of the Malaysian IP Association and has served as a co-opted member of its executive committee. Wyatt is also a fellow of the Chartered Institute of Patent Attorneys, a member of APAA and FICPI and an associate member of ITMA.
Lim Eng Leong is a registered patent, industrial design and trademark agent. He started his legal practice in one of Malaysia’s leading law firms, specialising in IP law. As well as prosecuting trademark applications, handling opposition proceedings and hearings, he advises clients on trademark protection strategies and other related matters.
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