MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
such issues arise, the common law will be adopted to fill the gap until express legislation is enacted to address this context. Given that the statutory law governing AI-generated works is still being developed in Malaysia, businesses there rely on contractual structuring of such works. 7.3 Training Data, Model Development and Infringement Risk In the absence of statutory law governing AI training datasets, the legal risks arising from using copyright- ed works or trade secrets would fall within the ambit of copyright infringement, trade secret and confidential information and contractual risks. As such, the excep- tions that may be available are the common excep- tions applicable under copyright, trade secrets and/or any other exceptions explicitly allowed under a con- tract. The enforcement available is therefore similar to that available for copyright, trade secret and breach of contract, which have been addressed above. 7.4 Enforcement Against AI-Enabled Infringement To date, Malaysia has yet to enact any laws to enforce against the misuse of generative AI tools. As such, the available mechanisms are those provided under copyright law, breach of confidential information and the Contracts Act 1950. Accordingly, in the absence of an explicit law gov- erning AI, the AI providers may still be exposed to infringement risks as the owners of AI. 8. Intersections and Overlaps 8.1 Choice of Protection and Strategic Considerations Generally, one form of IP protection would be preferred over another for the same subject matter, depending on the following factors, amongst others:- • the intended scope of protection; • the potential risks in the event that the IP is not protected in a certain aspect; • the impact in terms of commercial value of the risks that may arise;
• the cost involved; and • the challenges and chances of success.
Between patent and trade secret protection, the most common factors are the intended scope of protec- tion, the likelihood of reverse engineering, the ability to keep the information confidential indefinitely and the relative value of secrecy versus commercial value through disclosure. 8.2 Cumulative and Overlapping Protection Malaysia does not provide a statutory or judicial limit on cumulative protection. It is, however, trite that the scope of protection in different IP areas is limited to its respective scope, ie, copyright for the work, trade mark for the mark, industrial design for the aesthetic design, etc. In the event of conflicts involving multiple IP rights over the same product or feature, the local courts would dissect the issues based on the area of law, which in this case would separate each matter in accordance with the respective intellectual property area. 8.3 Patents and Trade Secrets It is generally possible for confidential know-how and technical information to be protected as a trade secret before and during a patent application by way of an agreement. However, the protection of the con- fidentiality of know-how and technical information as trade secrets after a patent grant, once the patent is published, is limited to information not disclosed in the patent grant, even if an agreement provides for confidentiality. 8.4 Trade Marks, Trade Dress and Industrial Designs Trade marks in Malaysia are signs that distinguish goods or services from one another. The shape of an article may be registered as a trade mark if it is capa- ble of being distinctive of the applicant. Trade dress, however, is not statutorily protected, but the equiva- lent of which is similar to the tort of passing off under the common law. As such, trade dress is usually relied upon when the proprietor has not registered a trade mark and/or design. The scope of protection for an industrial design is, however, limited to the aesthetic appearance of products, the ornamental design of packaging and visual configuration. Whilst it is pos-
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