MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
1. Trade Mark and Copyright Law 1.1 Governing Law In Malaysia, the primary legislation governing trade marks and copyrights are as follows. Trade Marks The Trademarks Act 2019 (the “TMA 2019”) and the Trademarks Regulations 2019 (the “Regula - tions”). Unregistered trade marks are protected in Malaysia under the common law tort of passing off. Similar to many other jurisdictions around the world, the protection of unregistered trade marks is relatively limited as compared to their registered counterparts. Copyrights The Copyright Act 1987 (the “CA 1987”). Copyright protection subsists automatically in works upon creation, and without the need for registration, so long as the conditions set out in the CA 1987 in relation to the qualification for copyright protection are satisfied. 1.2 Conventions and Treaties/Rights of Foreign IP Holders Trade Marks Malaysia is a member of the following main trade marks treaties and conventions: • the Paris Convention for the Protection of Industrial Property; • the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS); • the Nice Agreement Concerning the Interna - tional Classification of Goods and Services for the Purposes of the Registration of Marks; and • the Madrid Agreement and Madrid Protocol.
Foreign trade marks belonging to a person from a Convention country (ie, a country which is a member of a multilateral treaty relating to trade marks to which Malaysia is also a party) are enti - tled to protection without registration in Malaysia if it is a well-known mark. Copyright Malaysia is a member of the following main cop - yright treaties and conventions: • the Berne Convention; • the Budapest Treaty; • the Marrakech Treaty; and • the World Intellectual Property Organisation Copyright Treaty. 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Types of Trade Marks The types of trade marks recognised in Malaysia are a: • trade mark; • collective mark; and • certification mark. A trade mark is defined as a sign in the form of a letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, and/or sequence of motion, which is capable of being represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of oth - ers. Shape marks are registrable in Malaysia provid - ed that they do not consist exclusively of:
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