Introduction
According to the world body in charge of IP matters, WIPO, intellectual property (IP) refers to creations of the mind such as inventions, literary and artistic works, designs, symbols etc., which creations are used in commerce. Creations of the mind undoubtedly stem from an idea. An idea itself cannot be referred to as an intellectual property (IP) because based on WIPO’s explanation of IP, an idea cannot be used in commerce. What can be used in commerce would be the actual result of the creation and therefore the result must be in a tangible form. Results in tangible forms can range from inventions to drawings, to artistic works, to sculptures, to computer programs, to performances, to crafting, to planting, to creating formulas and the list goes on as the mind is a gift from God and can achieve wonders. Intellectual property rights (IPR) are rights which accrue from these tangible assets which rights are granted by way of law. For example, the rights to an invention which is new, involves an inventive step and is industrially applicable, accrue by way of a grant of patent. A grant of patent gives the owner certain rights in respect of his invention, for a certain period of time.
In Malaysia, whenever the word intellectual property (IP) is mentioned, it means different for different groups of people. For example, when one talks about IP to researchers, IP means patents; when one talks about IP to artists, IP means copyright; when one talks about IP to entrepreneurs, IP means trade marks; and when one talks about IP to the management of a company, IP means patents and copyright. This is the general knowledge of intellectual property (IP) level in Malaysia amongst the public. People fail to understand that ONE creation of the mind may encompass ALL categories of intellectual property (IP) in its own unique ways. This Article is written to allow readers to understand that intellectual property (IP) is not only about patents or not only about copyrights or not only about trade marks.
Intellectual property (IP) consists of a whole range of subject matters. The Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement) to which Malaysia is a member of, provides that there are 7 categories of IP viz. copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout-designs of integrated circuits and protection of undisclosed information. Based on this, we shall now herebelow, briefly illustrate about each category of IP in Malaysia:-
(a) Copyright & Related Rights
Copyright protects literary and artistic works such as every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science; and computer programs. Related rights are rights which accrue from performances of the works by producers and performers. In Malaysia, protection of copyright and related rights, are granted pursuant to the Copyright Act 1987. Section 7 of the Copyright Act 1987 states that works being literary works, musical works, artistic works, films, sound recordings and broadcasts are eligible for copyright irrespective of their quality. In addition, for literary, artistic and musical works, copyright can only be enjoyed if sufficient effort has been expended to make the works and those works must be reduced into a material form. Section 16A of the Copyright Act 1987 grants rights to performers of their performances. Copyright protection in Malaysia is enjoyed automatically upon creation of the work or performance. There is no registration required to enjoy copyright protection. However, for those who require documents to show proof of ownership of copyright, are free to apply for a voluntary notification from MyIPO. Generally, copyright is enjoyed for a duration of the life of an author plus 50 years thereafter.
Example of materials enjoying copyright in Malaysia are such as this very article itself “What does Intellectual Property (IP) means to you?” by Nisa@IPXM, the book “Antara banyak sinar…..entah mengapa, Bulan juga menawan pandang” by Mohd Khair Ngadiron, other creations googled from the internet such as the movie “Dukun” produced by Dominique Hee, the painting “Colours of Kota Bahru” by Mohd Noor Mahmud, the sculptures “Rooster Series Collection” by Nizam Abdullah, the songs “Kerana and Andai Ku Pergi Dulu” by Alleycats and the comedy performance “Asian Parents” by Harith Iskandar.
(b) Trademarks
Trademarks are any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. Signs include personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs. In Malaysia, trademarks are governed by the Trade Marks Act 1976. Section 3 of the Trade Marks Act 1976 defines trade mark inter alia as a mark used on goods or services for the purpose of indicating a connection in the course of trade between that good or service with the person making the goods or providing the services. Marks is defined to include device, brand, heading, label, ticket, name. signature, word, letter, numeral or any combination thereof. The fact that the wordings of the Trade Marks Act 1976 defining the word “mark” as to “include” rather than “mark means”, show that there is a whole range of matters which may qualify as mark and this include colours and 3-dimensional (3D) shapes.
To enjoy protection of trade mark, an application for registration of a trade mark shall be made to MyIPO. The advantages of having obtained registration of a trade mark, allows you to prevent others from using a similar or same trade mark as yours by way of an action of infringement against that other person. If a mark is not registered, then you are unable to commence an action of infringement. Though an action of passing off may be available for an unregistered trade mark, winning by way of passing off action is 99% most likely, only if you are able to show that there was some misconception in the public’s view between your trade mark and the trade mark used by the competitor. Trade marks which are registered are protected for a period of 10 years and in order to enjoy this protection in perpetuity, renewals must be done every 10 years.
Examples of trade marks in Malaysia that have been registered are such as “RsIP” and “It’s time to Bring It Out” for training services on intellectual property (IP) in Malaysia, “Ramly” for processed meat, “Baba’s” for spices, “Maybank” for financial services, “Petronas” for oil and gas, “Maggi” for instant noodles, “Cap Pisau” for oil, “Cap Sauh” for flour, “D’Saji” for catering services, “Adabi” for food and spices and “Lee Kum Kee” for oyster sauce.
(c) Geographical indications
Geographical indications are indications which identify a good as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. It is worth noting that geographical indications is NOT the same with appellation of origin. In Malaysia, geographical indications is granted protection via the Geographical Indications Act 2000. Protection is granted immaterial of the fact whether the geographical indication is registered with MyIPO or not. Geographical indications which are registered are protected for a period of 10 years and in order to enjoy this protection in perpetuity subject to certain conditions, renewals must be done every 10 years.
Examples of registered geographical indications in Malaysia are such as “Kopi Tenom” for coffee produced in Tenom, Sabah, “Bario” for rice produced in Sabah, “Sarawak Kek Lapis” for layered cakes produced in Sarawak, “Sarawak Pepper” for pepper produced in Sarawark, “Langkawi Cheese” for cheese produced in Langkawi, “Mangga Harumanis Perlis” for mangos planted in Perlis, Malaysia and “Kain Songket Melaka” for kain songket produced in Melaka, Malaysia.
(d) Industrial designs
Industrial designs are designs which are placed onto articles, which involves an industrial process. Generally, the features of designs are the shape, configuration, pattern or ornament. To qualify for registration, an industrial design must be new. In Malaysia, industrial designs are protected via the Industrial Designs Act 1996. Industrial design is defined in Section 3 as features of shape, configuration, pattern or ornament applied to an article by any industrial process, which features in the finished articles appeal to the eyes but do not include a method or principle or construction and features of shape and configuration which are dictated solely by function or those 2 features which are dependent upon the appearance of another article.
To enjoy protection of an industrial design, an application for registration of an industrial design shall be made to MyIPO. The advantages of having obtained registration of an industrial design, allows you to prevent others from using a similar or same industrial design as yours, by way of commencing an action of infringement against that other person. Industrial designs which are registered are protected for a maximum of 25 years and in order to enjoy this maximum period of protection, renewals must be done every 5 years. If an industrial design is not registered, then you are unable to commence an action of infringement. Unregistered designs are not protected in Malaysia unlike in some foreign countries which protect unregistered designs.
Examples of registered industrial designs in Malaysia are such as the “shape of chocolates in the form of grapes”, “plastic containers in various shapes, configuration and pattern”, “patterns on feeding bottles”, “patterns on biscuits”, “gutter groove joints”, “tables and walls ornaments” and “patterns and ornaments of a radiography machinery”.
(e) Patents
Patents are certificates of grants granted by Governments to owners of inventions which fulfill certain criteria. The patent gives the owner the monopoly to deal with his invention for a certain period of time. Generally, in order to obtain a patent for an invention, that invention must be new, involves and inventive step and industrially applicable. In Malaysia, patents are governed by the Patents Act 1983. There are 4 criteria to obtain a patent. In order to qualify for a patent, the first criteria is that it must be an invention. Section 12 defines invention as an idea of an inventor which permits in practice the solution to specific problem in the field of technology. An invention may be either a product or process. The other 3 criteria are new, involves an inventive step and industrial applicability. Not all inventions are patentable as under the Patents Act 1983, there is a list of inventions which are not patentable in Malaysia. Patents are issued for a maximum period of 20 years and in order to sustain your patent for 20 years, renewal must be carried out every year.
In Malaysia, there is another route to file in a patent application which is via the Patent Cooperation Treaty (PCT) system). For Malaysians, they are only allowed to use the PCT system or file a patent application outside Malaysia, after a normal patent application has been filed with MyIPO, unless they have obtained an approval from MyIPO that filing first in Malaysia is not necessary. Take note that failing to comply with either of these measures, results in an offence!
Examples of patents granted in Malaysia are such as “swivel bar pedal lock”, “earth retaining structure and its method”, “panel for retaining wall”, “spray guard for spray nozzle”, “electric meter reader”, “fluid flow meter”, “self-cleaning water filter”, “anti-fire locking device”, and “apparatus and process for continuous carbonizing of organic waste materials”.
(f) Layout-designs of integrated circuits
A one word which shows an example of this terminology is microchips. It is about integrated circuits with at least one active element with some interconnections which are integrally formed onto a piece of material, which is intended to perform an electronic function. In Malaysia layout-designs of integrated circuit is protected under the Layout-Designs of Integrated Circuits Act 2000. There is no need to apply for registration to protect your layout-designs of integrated circuit in Malaysia. Protection is automatic upon creation. Layout-designs of integrated circuit is protected for a maximum period of 15 years from the date of creation.
(g) Protection of undisclosed information
There are 2 types of undisclosed information that require protection under the TRIPS Agreement. The first type of undisclosed information is with regards to information which is kept a secret (secret or confidential information) and the second type of undisclosed information is with regards to tests data and clinical trial data submitted to a Government authority for purposes of obtaining a marketing approval.
In Malaysia, for the secret/confidential information, in the event someone steals these information from you, an action of breach of confidential information under the common law is available to you. For those of you whose tests data and clinical trial data has been submitted to the Ministry of Health (MOH) for purposes of obtaining the marketing approval of your product, your data is protected via the Data Exclusivity Directive 2011 of the MOH. However, to enjoy this protection, an application has to be submitted to MOH.
Confusion
There are many professionals who are confused between data exclusivity and patents; patents and copyright; and intellectual property (IP) in general in Malaysia. Based on a personal encounter, even a panel for a defense proposal of a PhD candidate’s thesis in Malaysia, had concluded that the topics data exclusivity and second medical patenting were the same, hence rejecting the proposal by that candidate. Having knowledge in intellectual property (IP) as a whole is vital for all. Just because you have attended a Seminar or a Talk on intellectual property (IP) or have carried out your PhD research in a particular component of intellectual property (IP) without having had knowledge or experience in dealing with intellectual property (IP), does not equip you with knowledge on intellectual property (IP). Knowledge is obtained by way of attending a Course or by way of Training or even perhaps by way of experience.
Take Home
As inventors, creators, administrators, managers, finance executives, designers, business consultants, bankers, researchers, lecturers, authors, producers, CEOs, CFOs, CINOs, ICT programmers, entrepreneurs, technopreneurs, business people…………….and even the general public, knowledge of intellectual property (IP) is vital for you.
Intellectual property (IP) is not only for the IP agents attending IP registration or lawyers attending to IP litigation. A simple analogy as to why knowledge of what IP is, is more important to all of you who are listed above rather than those who are meant to assist you such as agents or lawyers, can be made with knowledge on crimes. What is a crime or an offence in Malaysia? We all know what they are. Theft, robbery, corruption, cheating, murdering, kidnapping, human trafficking, money laundering, trespassing are just a few examples. We know what these crimes are in general and so we avoid committing crimes. However, if a crime has been committed, then we should seek the help of lawyers, who will apply the criminal laws to help you out.
Likewise, knowing what IP is, is important to you as the inventors, creators……..general public. Once you have knowledge on intellectual property (IP) in Malaysia, you are able to protect every IP that is generated during the creation process and protect that IP at the very initial stage itself and not only at the very end viz. once the product has been created. This leads to a sustainable organization. In the event there is a problem on IP, call out the ever willing agents / lawyers for help and they’ll apply the intellectual property (IP) laws of Malaysia to help you out. In essence, YOU need to know what IP is first before they can help you out!
Conclusion
Many employers are beginning to realize the importance of knowledge on intellectual property (IP) in Malaysia for their employees. As a Certified Professional Trainer (IPMA UK), specializing in intellectual property (IP) trainings and consultancy, I have conducted many in-house Trainings for organizations in Malaysia who appreciates the importance of intellectual property (IP) knowledge for their employees. All you need for an in-house Training is a number of 20 pax from your organization and ……wala….you’ll see how AFSB’s signature Trainings on IP using the adult learners’ methodology, help your organization become a sustainable one!
Contact: If you are interested to know more about intellectual property (IP) for your organization and how to get protection of intellectual property (IP) by way of DIY, come attend our Trainings on Intellectual Property (IP). WA us at 019-7372671 or drop us an email at amachafilles@gmail.com should you wish to know about our Training sessions.