MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
Under Section 54(2) of the TMA 2019, use in the context of infringement can include: • applying the sign on the goods or their pack - aging; • offering or exposing goods for sale under the sign; • putting goods on the market under the sign; • stocking goods for the purposes of selling them; • offering or supplying services under the sign; • importing or exporting goods under the sign; and • using the sign on invoices, catalogues, com - mercial documents, etc. Under Section 55(1)(b) of the TMA 2019, a per - son does not infringe a registered trade mark if they use a sign in good faith to describe the characteristics of goods or services, such as ori - gin, quality or purpose. 2.5 Notices and Symbols There is no legal requirement to use a symbol to denote a registered trade mark in Malaysia. However, it is an offence to use the ® symbol for trade marks that are pending or unregistered in Malaysia and if found guilty, the offender will be liable to a fine not exceeding MYR10,000. Applicants may use the trade mark symbol to indicate that the sign is used as a trade mark, but this is optional. 2.6 Related Rights Logos can be protected as artistic works under the CA 1987, meaning trade marks can also ben - efit from copyright protection in Malaysia. See 2.1 Types of Trade Marks on the registration of surnames. The CA 1987 and the TMA 2019 do not explicitly address interactions between
trade marks and moral rights. Trade mark and copyright laws operate independently.
3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works Types of Copyrightable Works Sections 7 and 8 of the CA 1987 grant protection to literary works, musical works, artistic works, films, sound recordings, broadcasts and deriva - tive works. Mutual Exclusivity on Protection over Industrial Designs Section 7(5) of the CA 1987 precludes copyright protection of industrial designs which are regis - tered under any law related to industrial designs. Industrial designs are protected by the Industrial Designs Act 1996 instead. 3.2 Essential Elements of Copyright Protection The elements to qualify for copyright protection are set out in the CA 1987. They are as follows. • Sufficient effort is expended to make the work original in nature. • The work is written down, recorded or other - wise reduced to material form. • There is a requirement for the copyright to be connected to Malaysia. This can be because: (a) the author is a qualified person (ie, a citi - zen or permanent resident in Malaysia or a body corporate established in Malaysia); (b) the work was first published in Malaysia; or (c) the work was created in Malaysia.
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