Region: Malaysia


Featured in Anti-counterfeiting 2015 – A Global Guide

Malaysia continues to expand its recognition of intellectual property as the intellectual capital of a business. One major effort has been in the education of financial institutions in the area of IP financing. On the legislative front, the Industrial Designs Act 1996 was the first IP legislation in Malaysia to accord recognition to industrial designs as personal property which may be assigned, transmitted or dealt with in the same manner as other personal or movable property.

08 May 2015

MyIPO launches IPR Marketplace Portal

MyIPO has launched the IPR Marketplace Portal, which aims to bring together and connect individuals, investors and businesses for the purpose of commercialising and trading in IP rights. Among other things, the portal enables IP owners to put their patents, industrial designs, copyright and trademarks up for sale or out-licensing.

30 July 2014

German company obtains cancellation of trademark registered by local distributor

In <I>Wieland Electric GmbH v Industrial Automation (M) Sdn Bhd</I>, German company Wieland Electric GmbH has obtained the cancellation of a trademark registered by Industrial Automation (M) Sdn Bhd, its former Malaysian distributor. Among other things, the court held that Industrial Automation had committed fraud on the registrar by misrepresenting itself as the rightful proprietor of the WIELAND mark.

24 April 2014

Geographical Indications (Amendment) Regulations 2013 come into force

The Geographical Indications (Amendment) Regulations 2013 have come into effect. They aim to regulate the requirements for registration of GI agents and to stipulate the procedures for the renewal of a GI. Pursuant to the regulations, there will now be a Register of Geographical Indications Agents.

04 September 2013

Malaysian valuation marketplace still in its infancy; brand owners are advised to act now

The Malaysian government recently announced the formulation of a national valuation model, targeted at helping brand-owners and lenders understand the potential value of their IP assets. Trademark counsel note that the model may take some time to roll-out so brand owners with impending transactions should act now and have valuations carried out independently.

17 June 2013

Federal Court recognises that fashion brands often engage in product diversification

In <i>Yong Teng Hing B/S Hong Kong Trading Co v Walton International Limited</i>, the Federal Court has affirmed a decision of the Court of Appeal finding that the respondent’s goodwill and reputation extended beyond clothing and apparel in Class 25. This case represents a victory for brand owners, as it demonstrates the willingness of the Malaysian court to keep up with trends, including product diversification.

19 November 2012

MyIPO introduces IP Official Journal

The Malaysian Intellectual Property Office is introducing an <i>IP Official Journal</i>, which will allow the publication of patents, trademarks, industrial designs and geographical indications online. What is unique in the new system is that it includes a “promotions” feature, which will enable trademark owners to advertise their products or services on MyIPO’s website.

21 June 2012

Revamped Trade Descriptions Act introduced

The Malaysian government has introduced a revamped Trade Descriptions Act, which repealed the Trade Descriptions Act 1972. Among other things, a 'trade description' is now clearly defined as including a registered trademark. In addition, the new act has widened the scope of punishable offences and introduced significantly increased penalties.

09 January 2012

Federal Court clarifies that registrar of trademarks is not an inferior court

In <i>Yong Teng Hing B/S Hong Kong Trading Co v Walton International Limited</i>, the Federal Court has held that a decision of the registrar of trademarks is not a decision of a subordinate court under the Court of Judicature Act. Based on the decision, it seems that appeals from decisions of the registrar may be filed all the way up to the Federal Court, as the registrar does not fall within the definition of a 'subordinate or inferior court'.

10 October 2011

Assessment of damages must be based on loss of business profits

In <i>Taiping Poly (M) Sdn Bhd v Wong Fook Toh</i>, the Federal Court has considered the principles of law to be applied when assessing damages in a trademark infringement and passing off case. The court held that the principal head of damage is the 'loss of business profits' caused by the diversion of the plaintiff’s customers to the defendant as a result of the defendant’s misrepresentation.

11 May 2011

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