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BUSINESS BRIEF: MALAYSIA


BUSINESS BRIEF: MALAYSIA


Patents How do you register or secure patent rights, and is national or international coverage most appropriate? Patent rights can be secured by filing a patent at


the Intellectual Property Corporation


of Malaysia (MyIPO). Since May 16, 2006, individual patent


owners


have been able to use the Patent Cooperation Treaty (PCT) system to file and prosecute patent applications and protect their inventions internationally. Business and marketing strategies, monetary


considerations, effectiveness of enforceability and the presence of competition are some of the factors that should be taken into consideration when deciding whether to


seek patent protection locally and/or internationally.


Is there anything unusual about the patent law(s) that companies should be aware of, and what are the most common mistakes businesses make? Conducting prior art searches is a strategic move that should be adopted before filing a patent to avoid it being invalidated. Disclosure of an invention before filing the patent should be avoided as it can affect the novelty requirement. Malaysian patent provisions provide a one-year grace period preceding the date of the patent application.


What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent? A key threat is having


patents infringed


and challenged or invalidated. Rather than embarking on a civil suit at first instance, which may prove both costly and time-consuming, right owners can opt for pre-emptive measures, including warning notices asserting proprietary rights but giving


the option of licensing agreements, and cease-and-desist letters. and companies


Trademarks How do you register or secure trademark rights and what protection do they grant? Trademark registration is obtained by filing the mark at MyIPO. Trademark protection provides exclusivity to the registered proprietor to use the mark on the goods or services for which the mark is registered and the prima facie right to carry out trademark infringement proceedings against anyone using the marks without consent.


What are the key threats to trademark owners and what is the best strategy for dealing with infringement? Te key threats are counterfeiting


standi threshold, where applicants have to show that they were aggrieved by the registrations of the marks they wish to cancel.


and


infringement, particularly in the digital space. Te internet has provided an expansive platform for increasing the sale of infringing goods. Te anonymity and global nature of the internet makes it hard to trace those who operate websites that sell infringing goods.


Have there been any changes to the trademark law(s) in the last 12 months? Tere have not been any significant changes, although we await Malaysia’s accession to the Madrid Protocol, which is expected this year. Te Trade Marks Act 1976 may also undergo some changes with the proposed introduction of non- traditional trademarks including sounds, colours, smells, taste or a combination of these elements.


Are there any nuances in the trademark law(s) that foreign companies should be aware of? Expedited examination of trademarks is now available, which shortens the pending period of an application. Tis is useful in cases where the applicant is seeking to pursue an injunction or infringement action. In a cancellation action, it is essential for the party seeking cancellation to pass the locus


102 World Intellectual Property Review Annual 2015


Counterfeiting How big a problem is counterfeiting in your jurisdiction? Counterfeiting has proven to be a growing problem despite legislative changes, preventive measures, education and awareness campaigns. However, the government’s efforts have yielded results with the US Trade Representative’s (USTR) Special 301 Report 2014, an annual report which assesses the US’s trading partners’ efforts to protect IP, having removed Malaysia from its ‘watch list’. Te use of digital technologies presents a


form of anonymity, thereby making it an ideal platform for selling counterfeit goods online. Tis makes policing and combating counterfeits an arduous task. Further, Malaysia’s strategic location makes it an attractive transit point for such goods. Te border measure provisions are still although these are powerful


under-utilised,


tools to restrict and prohibit the importation of counterfeit goods into the country.


What industries are particularly at threat? Fashion, luxury wear, electronic and communication equipment, traditional health products and medicine.


What are the best strategies for dealing with the problem? Te best enforcement strategies are ones which involve the interaction of all interested parties, ie, enforcement officers under the Ministry of Domestic Trade, Co-operatives and Consumerism (MDTCC), MyIPO, the Attorney General’s Chambers, Malaysian customs officials and IP owners. Te Trade Descriptions Act 2011 is a powerful


www.worldipreview.com


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