WORLD PATENT & TRADEMARKOSAKA
DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
WORLD TRADE CENTER BUILDING SOUTH TOWER 29F,HIROSHIMA
2-4-1, HAMAMATSU- CHO, MINATO-KU,
NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPANOpened on
GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.
|Information on Developing Countries
(BRICs, VISTA, et cetera)
Patent engineering staff specialized in patent affairs
Design/trademark staff specialized in design/trademark affairs
: Maiko MURAHASHI
: Seiichiro OYAMA
: Shuichi GOINO
|| : 81 - 3 - 3433 - 5810
|| : 81 - 6 - 6351 - 4384
|| : 81 - 3 - 3433 - 5281
|| : 81 - 6 - 6351 - 5664
|| : 81 - 82 - 545 - 3680
|| : 81 - 52 - 589 - 2581
|| : 81 - 82 - 243 - 4130
|| : 81 - 52 - 589 - 2582
1. General information on Malaysia
Malaysia is a nation including two regions namely Malay Peninsula and Borneo Island and shares its boarders with neighboring countries such as Thailand, Indonesia, and Brunei. Malaysia is also a member of ASEAN.
While having a number of resorts such as a world-famous Penang Island, Malaysia has been achieving rapid economic growth. Petronas Twin Towers, having an advanced design, can be named as a symbol of the economic growth.
The capital city is Kuala Lumpur. Official language is Malaysian and the currency is Ringgit (MYR). The country code top-level domain is ".my".
Some may have heard a phrase "Joy of Johor Bahru", which is used to express a Men's football game in which Japan national team beat Iran national team and was qualified for the World Cup for the first time. Johor Bahru is the name of the city where the football game took place and is one of the main cities in Malaysia.
Malaysia is active in production of minerals such as rubber and tin and production of agricultural products. Meanwhile, without depending only on such products and tourist industry, Malaysia has been achieving a constant success in economic policies including construction of infrastructure and improvement in heavy industries. Malaysia aims to join advanced nations in 2020.
2. Outline of Intellectual Property Rights in Malaysia
An outline of jurisdiction prescribed in each law is shown below.
||English or Malaysian
||20 years from filing date
||10 years from filing date (extension allowed twice, 5 years each time)
||5 year from filing date (extension allowed twice, 5 years each time)
||10 years from filing date (extension allowed every 10 years)
||Within 2 months from publication of application
|System of Trial for Invalidation
Malaysia is a signatory country to the Paris Convention, the WTO Agreement, the Patent Cooperation Treaty (PCT), the Nice Agreement, and the like.
3. Patent Right
- Patent right is protected for 20 years from the filing date.
3-2. Subjects to be protected
- Industrially applicable inventions are protected.
- Scientific theory, mathematical method, variants of plants or of animals, biological method, etc. are not protected.
- Since Malaysia is a signatory country to the Paris Convention, the Applicant can claim priority based on a Japanese patent application.
- Since Malaysia is a signatory country to the PCT, the Applicant can designate Malaysia as a designated nation at the time of filing a PCT application.
- The Applicant is required to submit an application form, a specification, claims, necessary drawings and other prescribed documents.
- Submission of Power of Attorney (late submission is accepted for 6 months from the filing date) as well as payment of fees are required.
- The Applicant is required to submit a certificate of priority document when requested to do so by the Intellectual Property Corporation of Malaysia (hereinafter referred to as “MyIPO”).
- An application is first examined whether it complies with the formality requirements. Then, a supplementary examination is conducted (checking of format of specification, size of paper, etc.).
- There are two types of requests for examination. The Applicant can file either a request for substantive examination (for normal applications) or a request for modified substantive examination.
(1) Substantive Examination (for normal applications)
Substantive examination is a type of examination under which the MyIPO conducts an examination on its own. Note, however, that, if the Applicant submits, as materials, information on and/or an examination result of the application filed with the Patent Office(s) of a foreign country(ies) other than Malaysia, the MyIPO considers such materials in their examination. In view of this, it is said that the Applicant should submit such documents at the time of filing a request for a substantive examination.
(2) Modified Substantive Examination
Modified substantive examination is a type of examination carried out in a case where a foreign patent application that corresponds to a patent application to be filed with the MyIPO is already granted a patent by the government office with which the foreign patent application was filed. Here, the content of the application filed with the MyIPO is required to be essentially identical with the content of the foreign application granted a patent so that the application filed with the MyIPO is granted a patent through the modified substantive examination.
For this reason, in a case where the Applicant files a request for modified substantive examination, the Applicant is required to submit the certified copy of patent on the foreign patent application that corresponds to the patent application to be filed with the MyIPO. Note that there may be such cases, at the time of filing a request for modified substantive examination, that a result of investigation and/or examination for the corresponding foreign patent application is not available or the foreign patent application is not granted a patent yet. In consideration of such cases, the due date for fling a request for examination (usually 2 years from the filing date) can be extended for 1 year in a case of requesting a substantive examination and for 2 years in a case of requesting a modified substantive examination.
- There is no opposition system.
3-5. Obligation to Work the Invention
- A patentee is required to work the invention by (i) 3 years from the registration date or (ii) 4 years from the filing date, whichever comes later.
4. Utility Model Right
- Utility model right is protected for 10 years from the filing date. Extension of duration is allowed twice. Each extension period is 5 consecutive years (maximum duration: 20 years).
4-2. Subjects to be protected
- Utility model is defined as "a new apparatus, tool, object or method that is practical with its shape, structure, or combination thereof". Inventive step is not required for a utility model unlike a patent.
- In order for a utility model application to be examined, the Applicant is required to file a request for substantive examination and to pay a predetermined fee.
- There is no opposition system.
5. Design Right
- Design right is protected for 5 years from the filing date. Extension of duration is allowed twice. Each extension period is 5 consecutive years (maximum duration: 15 years).
5-2. Subjects to be protected
- Design is defined as "a shape, pattern or pattern characteristic that can be applied to an article during an industrial production process". Any design that is contrary to public order and morality cannot be registered. A design of a set of articles can be registered.
- Since Malaysia is a signatory country to Paris Convention, the Applicant can claim priority based on a Japanese design application.
- Malaysia has not signed the Hague Agreement.
- The Applicant is required to state, in an application form, an article to which a design to be filed is related and international design classification of the design, and submit either a photograph or a drawing.
- Payment of predetermined fees and submission of Power of Attorney are required.
- A document(s) showing that the right to obtain a design registration is transferred from the creator to the Applicant (assignment, or creation by employees) is required. In addition to this document, explanation on novelty is required.
- It is possible to file one (1) application for a plurality of designs.
- The application is examined as to formality requirements only. Substantive requirements are not questioned.
- When judged as complying with all the formality requirements, the application is registered in the official register and then a registration certificate is issued.
- There is no opposition system.
6. Trademark Right
- Trademark right is protected for 10 years from the filing date. Extension of duration is allowed every 10 years.
6-2. Subjects to be protected
- Trademarks for goods and services are protected. Trademarks with no distinctiveness and those that are similar to the trademarks registered by others are not protected.
- Trademarks that are contrary to public order and morality are not protected.
- Besides the normal trademark registration application, applications for (i) an associated trademark, (ii) series of trademarks, (iii) a defensive mark, and (iv) a certification mark are also possible.
- Since Malaysia is a signatory country to the Paris Convention, the Applicant can claim priority based on a Japanese trademark registration application.
- In a case of an application filed by a foreign national, it is not necessary that a trademark to be filed is registered in advance in his/her country.
- Malaysia has not signed the Madrid Protocol.
- When filing an application, the Applicant is required to submit (i) a sample of the trademark and (ii) statements regarding a class of the trademark and whether the trademark is for goods or services, etc. Further, submission of an oath (i.e., a document verifying that the Applicant is the owner of the trademark) is required within a prescribed period.
- In Malaysia, multiple classes cannot be designated in a single application. Therefore, the Applicant is required to file an application for each class.
- After the application has been filed, a formality examination is conducted and then a substantive examination is conducted.
- An opposition can be filed by a third party within 2 months from the publication of the application.
- If a registered trademark is not used for 3 years, such a trademark is subject to an appeal for cancellation of trademark due to non-use.
6-6. Trial for invalidation
- There is a system of trial for invalidation.
URL of the Intellectual Property Corporation of Malaysia (MyIPO): http://www.myipo.gov.my/
| Patent&Trademark Attorney
Maiko MURAHASHI, obtained a BS in Animal Physiology from Shinshu University. The targets of her research include Metabolism and Endocrinology. Her specialty covers Biotechnology. She is presently a member of JPAA.
It is expected that strategies for protecting and utilizing intellectual property will be greatly influenced by changes in industrial structures and technological innovations. I will make assiduous efforts to meet client’s demands and suggest optimum strategies in legal aspect.
|Tokyo Legal Strategy Department Trademark Division Assistant Manager
Majored in Law
Worked three years as an investigator in the Trademark Division of the Japan Patent Office
Utilizing my experience at the Japan Patent Office, I will strive daily to further improve my skills and make my utmost efforts to provide services for our clients' diverse businesses.