Intellectual Property

Unknown Caribbean company files for MH17 trademark

I was quoted by Digital News Asia in their article “Unknown Caribbean company files for MH17 trademark” published on 22 July 2014.

Unknown Caribbean company files for MH17 trademark
Gabey Goh
Jul 22, 2014

– Trademark applications filed for ‘MH17’ & ‘MH370’ for use in EU
– Case of companies or individuals using trademark register to take advantage of a tragedy

IN THE wake of the MH17 tragedy, reports have already surfaced about cybercriminals taking advantage with fake Facebook pages being created in the name of victims, for money.

Now it appears opportunism has reared its ugly head in another way – Digital News Asia (DNA) has learnt that claims have been filed to trademark the terms ‘MH17’ and ‘MH370.’

MH370 was the number of the Malaysian Airlines flight that inexplicably disappeared on March 8, remaining one of the aviation industry’s greatest mysteries. The Beijing-bound flight from Kuala Lumpur was carrying 12 crew members and 227 passengers, the majority of whom were China nationals. The search and rescue operation has yet to find remains of the craft.

Malaysia’s national carrier, already reeling from that disaster and a disappointing financial year, then experienced another disaster when Flight MH17 from Amsterdam to Kuala Lumpur was shot down over Ukrainian airspace on July 17, killing all 283 passengers and 15 crew on board.

Details of the ‘MH17’ filing, submitted on July 17 itself, were found on the European Trade Mark and Design Network website and the application under examination. The ‘MH370’ filing submitted on May 2 was found on the Justia Trademarks site, and according to the site, has yet to be assigned a case examiner.

According to available details, the same company, Seyefull Investments Limited which is incorporated in Belize City, filed both applications.

Belize City is the largest city in the Central American country of Belize and was once the capital of the former British Honduras. It is located at the mouth of the Belize River on the coast of the Caribbean.

The scope of usages listed within both applications is wide ranging: From conferences, exhibitions and competitions; to education and instruction, and entertainment services (namely, the provision of continuing programmes, segments, movies, and shows delivered by television, radio, satellite and the Internet).

DNA columnist and intellectual property lawyer Foong Cheng Leong (pic) noted that trademark rights are limited to the goods and services chosen by the proprietor.

“Here, the applicant is registering the mark MH17 for all sorts of products in the European Union. By being the registered proprietor, they have the rights over the mark [when it comes to] the registered goods and services in the European Union.

“They may stop people from using the mark or ask for payment in the European Union,” he added.

Asked whether these trademark claims were the groundwork for potential ‘trademark trolling’ efforts, Foong said that he would not be able to determine whether they are trademark trolls without a deep investigation into the entity in question.

‘Trademark troll’ is a pejorative term for any entity that attempts to register a trademark without intending to use it, and who then threatens to sue others who use that mark.

It is a different beast from a ‘patent troll,’ also called a patent assertion entity (PAE), a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question, thus engaging in ‘economic rent-seeking.’

Claiming a stake in crisis

This is not the first time an attempt has been made to claim the intellectual property associated with a global event. Among the most notable was when a businessman named Moti Shniberg tried to trademark the term ‘September 11, 2001’ … on the day itself.

Shniberg said he had filed for the trademark for “charitable purposes,” but the US Patent and Trademark Office ultimately rejected the application. It was one of about two dozen reportedly filed trademarks related to the Sept 11, 2001 terrorist attacks in the United States.

Lawyers and trademark industry watchers DNA spoke to for this article noted that it is quite common for people to file trademarks based on words related to current affairs.

A trademark industry observer, who asked not to be named, said that such filings are “fairly common, but also fairly pointless” because they usually get rejected and lead to bad public relations for the people or company which filed the trademark, as well as for the trademark industry as a whole.

He said that the case in question was “another sign of companies or individuals taking advantage of tragedies using the trademark register.”

“I don’t know the reason for these, it’s probably opportunistic from what I can tell – the fact the MH17 one was filed on Thursday definitely suggests that.

“My guess would be it’s a shell company of some kind. The company’s other trademark is for ‘Mata Hara 308‘, which appears to be linked to this website which mentions MH370, and has the same image for its browser tab as the Seyefull website, so I think they’re linked.” he added.

Asked whether Malaysia Airlines (MAS) should be concerned about such moves, he pointed to another filing made by Aoan International Pty Ltd to register an Australian trademark for ‘MH370’ in March that is due to be accepted on July 30.

“However, it seems that Malaysia Airlines is concerned about this kind of thing because 10 days ago, [Malaysia Airlines] itself registered a trademark in Australia for ‘MH370′,” he said.

Additional checks also found that MAS had filed its own Community Trade Mark application for ‘MH17.’ However, this was made on July 21, a few days after the application made by Seyefull.

“I do not know why [Malaysia Airlines] filed, but it may have been alerted by the company’s application or is trying to block others from registering the mark,” said Foong.

A corporate lawyer who also declined to be named for this article said that to her knowledge, there are corporates and individuals “who more often than not, seize the opportunity to register certain names when they sense the potential in future commercial exploitation.”

“Apart from applications for registration of a trademark, another area is the registration of domain names. The name ‘everyone can fly’ and ‘airasia’ have been rampantly applied by different individuals from all over the world,” she said.

She noted that at first glance, the most obvious reason why one would want to register ‘MH370’ and ‘MH17’ now is probably due to the potential of these events being made into movies or books.

“However, one should also question whether they infringe the rights owned by MAS in applying to register such a mark in the first place.

“Usually, the Registrar would not allow registration should it feel that this infringes the existing rights of another party. MAS still retains the common law proprietary rights in the mark,” she added.

New Chinese Trademark Law to be implemented on May 1, 2014

Published with permission of Eagle IP Ltd, a Hong Kong and Chinese IP Firm.

The Chinese Government announced that the 3rd amendment to the 1982 Trademark Law, passed by the 12th meeting of The Standing Committee of the National People’s Congress, will be implemented as of May 1, 2014.

Below are some major highlights:

Multi-class applications
At present, multi-class application is not available. Under the new Trademark Law, applicants who wish to obtain protection for a trademark in more than one class is required to file multiple applications with the Chinese Trademark Office.

Multi-class applications will likely decrease application costs for companies with diversified business and need to protect their marks on a wide range of goods and/or services.

Sound marks will be registerable
The existing Trademark Law only provides for the registration of words, figures, letters, numerals, color combinations, 3-D symbols and any combination of the above. The amendment allows registration of sound marks.
Cell phone manufacturers, software companies and entertainment companies such as Sony Mobile, Microsoft, Twentieth Century Fox are likely to benefit from the new provision.

Time limit on examination procedures
Lengthy application process is a flaw known well to both applicants in China and abroad. The new Chinese trademark law set the time limit for preliminary examination from filing to publication to 9 months. The stipulated time limit for the Trademark Review and Adjudication Board to make a decision regarding a trademark review case of trademark rejection is also set at 9 months. The examination period for making a decision regarding an opposition case is 12 months. Time limit for examination might be extended by no more than 6 months only under exceptional circumstance with the approval of the relevant officials.
This means the trademark application process is expected to be shortened considerably.

Prior use of a trademark will be considered
Currently, China adopts first-to-file principle. This means a trademark that has successfully registered will defeat a trademark that has long been in use in China for a longer time but has not obtained registration.
Under the 3rd amendment, prior use of a mark will be recognized. Provided that a trademark has been in use in China for a long period of time and has established reputation, the trademark owner will be allowed to continue to use the mark within the original scope.

Increased protection against bad faith registration
The existing Trademark Law only prohibits bad faith registration of a trademark by agents and representatives of a trademark owner. The new Trademark Law now stipulates that any party who has commercial or contractual relationship with the trademark owner is prohibited from registering a trademark in bad faith if opposed by the owner.

Well-known trademark
Ever since “Well-Known trademark” protection is introduced in China in 2001, Chinese companies are very keen on trying every possible way to have their trademarks declared “Well-known”. “Well-Known trademark” has become a means of advertising and sales promotion. The new Trademark Law prohibits companies from putting the words “Well-Known trademark” on the packaging of their products. It also stops use of such status in advertising, exhibition and commercial activities.

Increased damages for trademark infringement
Under the current Trademark Law, the maximum statutory damages for trademark infringement are RMB 500,000. The new Trademark Law pushes the ceiling up six-fold to RMB 3,000,000. Punitive damages are also introduced where the trademark infringement is intentional and has serious consequences.

Compendium of Malaysian Intellectual Property Cases – Trade Marks

My first book, Compendium of Malaysian Intellectual Property Cases, will be launched this month or early next month. It is now available for pre-order. Click here to order!

This book contains more than seventy (70) reported and unreported cases on Trade Marks from the Malaysian High Court, Court of Appeal and Federal Court. For ease of reference the cases have been divided into sections such as infringement, passing off, rectification and opposition. The cases also cover other issues such as non-compliance of pre-trial case management, stay of proceedings, defamation, striking out and assessment of damages in these intellectual property cases. Many of these judgments are not published by the local law journals and they contain many important points of laws.

This is the first publication of a series of books containing reported and unreported Malaysian intellectual property cases.

– This title acts as a handy and mobile casebook
– Catchphrases are comprehensive and helpful in focusing the readers on the specific issue of Trade Marks
– This title is an indispensible tool for lawyers, in-house counsels, patent attorneys, intellectual property practitioners and students.

1. Detailed Flyer
2. Extract of the Book

Apple moves to trademark the term ‘startup’ in Malaysia

I was quoted by Digital News Asia in their article, “Apple moves to trademark the term ‘startup’ in Malaysia“on 30 August 2013.

I understand that the Technopreneurs Association of Malaysia (TeAM) will be taking on Apple’s STARTUP trade mark applications by filing an opposition before the deadline. More details at Digital News Asia.

Apple moves to trademark the term ‘startup’ in Malaysia
Gabey Goh
Aug 30, 2013

– Applications filed with MyIPO for mark under various classes
– Members of public or companies have until Oct 8 to oppose

IN a move that will certainly raise many eyebrows, Apple Inc has filed applications with the Intellectual Property Corporation of Malaysia (MyIPO) to trademark the term ‘startup’ in the country.

Yes, you read that right.

The Cupertino, California headquarters of Apple and a Kuala Lumpur-based legal representative, Wong & Partners, lodged the ‘startup’ applications on July 23.

The technology giant has applied to hold the trademark of the word ‘startup’ under various computing, mobile and educational classes.

According to the documents submitted, the mark ‘startup’ is being applied for in classes 35, 37, 41 and 43 for the following services:

Class 35: Retail store services, including retail store services featuring computers, computer software, computer peripherals, mobile phones, and consumer electronic devices, and demonstration of products relating thereto.
Click here to view/download the application [PDF]

Class 37: Maintenance, installation and repair of computer hardware, computer peripherals and consumer electronic devices; consulting services in the field of maintenance of computer hardware, computer peripherals, and consumer electronic devices.
Click here to view/download the application [PDF]

Class 41: Educational services, including conducting classes, workshops, conferences and seminars in the field of computers, computer software, computer peripherals, mobile phones, and consumer electronic devices and computer-related services; providing information in the field of education.
Click here to view/download the application [PDF]

Class 42: Design and development of computer hardware and software; technical support services, namely, troubleshooting of computer hardware and software problems; installation, maintenance and updating of computer software; technological consultancy services in the field of computers, computer software and consumer electronics; computer diagnostic services; computer data recovery.
Click here to view/download the application [PDF]

According to a report by Australia-based website TM Watch, which specialises in trademark developments, the same set of applications has also been filed in the country.

Calling it an “audacious” application, TM Watch journalist Tim Lince also noted that “the official Apple website references its operating system booting-up as ‘Startup’ (with a capital letter).”

[UPDATED] Terrence Lee of has also reported that Apple has tried the file the same set of applications in Singapore since 2011.

The company’s trademark application was filed through the Madrid Protocol, an international registration system for marks of which Singapore is a member country. The US and China registrations may have also been filed through this system.

In Singapore, the mark is still pending approval despite being registered more than two years ago, which suggests that the registration has faced complications.

According to Lee, it is unclear if the Intellectual Property Office of Singapore received any objections, since any party can oppose the trademark two months after it was filed.

Responding to queries by Digital News Asia (DNA), intellectual property lawyer Foong Cheng Leong (pic) said that it is possible to trade mark English words so long that the mark is distinctive i.e. capable of distinguishing its goods or services from other traders.

“The marks, once registered, would give exclusive rights to Apple Inc to the word ‘startup’ in respect of the above listed services. Apple may stop anyone from using the said marks for the above listed services,” he said.

Foong added that the mark would cover the term ‘startup’ in any other variation, be it upper case or lower case letters such as ‘STARTUP’, ‘Startup’ or ‘StartUp’.

“Note that the registration does not mean that nobody can use the word ‘startup’ for any goods or services. It is only limited to the registered goods or services,” he added.

When asked how this move would affect existing boot camps, accelerator programmes and government-initiated programmes that have the term in their names, Foong said that assuming the marks are registered, if any of these bootcamps or accelerator uses the mark ‘startup’ for any of the abovementioned services (e.g. education services), they may be open to trade mark infringement and legal action.

“You can’t even provide retail services using the mark ‘startup’!” he added.

Moreover, Foong noted that if no one opposes the application with MyIPO, the application would proceed to the next stage of the process, which is registration.

“Three of the marks are advertised in the Government Gazette for opposition purposes. That means, any person can file a Notice of Opposition with MyIPO against the applications on or before Oct 8 2013.

“If no oppositions are filed after Oct 8 2013 — except the mark in Class 35 which is still pending advertisement — the marks will proceed to registration,” he said.

In addition the application cites a priority claim on the trademark from Jamaica dated Oct 21, 2010.

According to Foong, the law allows trademark applicants to get an earlier priority date by relating to a foreign mark.

“So for example, I filed a trademark in Singapore on May 25, 2013 and I also intend to file the mark in Malaysia on Aug 25, 2013. Instead of getting a priority date of Aug 25, 2013 (which is the filing date), I will get a priority date of May 25, 2013 (if I rely on the Singapore application).

“This is useful because if someone filed the mark after you filed your mark (let’s say on Aug 1, 2013) in Malaysia, your Malaysia trade mark will prevail because you got an earlier priority date. That person’s trademark will get objected,” he said.

DNA has reached out to Apple in Cupertino, California, and is currently awaiting official comment.

Bread & Kaya: Choosing a good trademark for your startup

Choosing a good trademark for your startup
Foong Cheng Leong
Aug 16, 2013

– A descriptive name has its advantages, but can be very hard to protect legally
– Register your mark, or you might find yourself in court when you go to market

Bread & Kaya by Foong Cheng Leong

WHEN George Eastman, founder of Eastman Kodak Company, chose the name Kodak for his camera, he explained why:

… because I knew a trade name must be short, vigorous, incapable of being mis-spelled to an extent that it will destroy its identity, and, in order to satisfy trademark laws, it must mean nothing. The letter K had been a favourite with me – it seemed a strong, incisive sort of letter. Therefore the word I wanted had to start with K. Then it became a question of trying out a great number of combinations of letters that make words and ending with K. The word Kodak is the result.

Although great advice from a man 100 years ago, it is difficult to come out with such special name for a product. It is enticing for traders to choose a name that best describes their products. It saves them the trouble of promoting extensively or even explaining to customers what the name is all about.

But the use of a name which directly describes one’s goods or services generally attracts problems.

A few years ago, the National ICT Association of Malaysia (known by its Malay-language acronym Pikom) initiated action against EM Exhibitions (M) Sdn Bhd and one of its directors for using the trademark ‘PC EXPO’ for its computer exhibitions.

Pikom alleged that the mark PC EXPO infringes and passes off its trademark ‘PC FAIR.’ The High Court held that the ‘PC FAIR’ is a common descriptive term and is used by numerous traders in the computer industry.

Thus, in short, the mark PC FAIR is not protectable and EM Exhibitions (M) Sdn Bhd is free to use the mark PC EXPO. [For the full judgement, click here].

The moral of the story is, always choose a distinctive mark. A distinctive mark is a mark which distinguishes your products from other traders. A distinctive mark can be registered and protected.

Although an unregistered mark can also be protected, you will need to produce voluminous evidence in court to show that your mark is protectable.

A distinctive mark should be a mark that does not have direct reference to the character or quality of your products. For example, the ‘e-Commerce Shop’ trademark for websites is not a distinctive mark as it describes the character of your product.

However, if you name your fruit stall ‘e-Commerce Shop,’ then you may be able to register it as it does not describe the goods and services provided by your stall.

If you are selling clothes on your e-commerce store, you should avoid using words like ‘clothing,’ ‘fashion,’ ‘haute’ or ‘couture’ as your trademark unless it is combined with a distinctive word or words such as ‘Digital News Asia Fashion.’ [A hint we should diversify? – ED]

Words that extol your products also should be avoided. For example, ‘cheap,’ ‘good,’ ‘great,’ ‘pretty,’ ‘fabulous,’ ‘sexy,’ ‘awesome,’ ‘cool,’ ‘cute’ and ‘best.’

The mark also should not be a name of a place – for example, ‘Silicon Valley’ for software.

Lastly, using a mark which is similar to your competitor’s trademark is a big no-no! If you do so, you’ll be beaten down with a lawsuit before you can start doing business.

You should do an online search at the Intellectual Property Corporation of Malaysia’s database.

Notwithstanding the above, there is nothing wrong with using generic words as your trademark. However, you may not be able to obtain protection.

If you wish to use a generic word, it should be accompanied with a distinctive word or set of words – for example, ‘FCL&Co Legal Services.’

Why register?

Your intellectual property is an asset. Registration gives you exclusive rights over the mark. You may sell it or license it.

There are many horror stories where marks were misappropriated by third parties when the owners did not register them. This usually results in a long and expensive legal suit. Some even had to change the marks that they had been using for years.

You may register the mark yourself by heading to the Intellectual Property Corporation of Malaysia or alternatively, engage a Trade Mark Agent to assist you. The latter would be recommended as they can provide you with proper advice and services.

To conclude, choose a distinctive mark before rolling out your products!

First published in Digital News Asia on 16 August 2013


This article was published by Sin Chew in 2009. I didn’t realise that there is a digital copy of the article on its website. It was originally written in English but translated by Sin Chew into Chinese. I am reproducing it here for the benefit of my Chinese readers. Sadly, I am unable to read or write Chinese.


大馬是從1962年開始,由當年的Pejabat Cap Dagangan dan Jamin hak(商標與版權辦事處)管理知識產權。後來,有關辦事處於1983年在貿易與工業部旗下更名為Pejabat Dagangan dan Paten(商業與專利辦事處)。

1990年10月27日,商標與版權辦事處在國內貿易與消費人事務部旗下,再次更名為Intellectual Property Division(IPD,知識產權組),負責行政與管理大馬的版權法令、商業設計法令、電路集成板設計圖法令,和原產地理標示法令。


能注冊擁有權的知識產權包括了:專利(Patents)、商標(Trade Marks)、工業設計(Industrial Designs)、原產地理標示(Geographical Indications)、版權(Copyright)和電路集成板設計圖(Layout-Design of Integrated Circuits)。

知識產權,牽涉的範圍非常廣闊,也相當復雜。但於Lee Hishammuddin Allen &Gledhill律師樓執業,專門處理知識產權案子的馮正良律師表示,大馬發生最多的是商標爭奪案子,較少涉及版權和專利的案子。



McCurry Restaurant(KL)Sdn Bhd對壘McDonald’s Corporation
麥當勞欲阻止本地一家以快餐店概念賣馬來西亞和印度料理如咖哩魚頭、Briyani飯、椰漿飯、印度煎餅、拉茶的McCurry Restaurant(KL)Sdn Bhd用Mc名字。
有關餐廳提出的理由是:McCurry是Malaysia Chicken Curry的縮略語。麥當勞打到高庭成功取得禁令,禁止McCurry餐廳繼續使用Mc這個字眼。餐廳後來上訴,上訴庭認為高庭的判決不正確,並允許餐廳繼續使用McCurry名字。上訴庭判決的部份根據理由(當然還有很多詳細的理由)包括了:
●McCurry餐廳的招牌,是紅底上寫著白色和灰色Restoran McCurry,並附上一幅雙手豎起拇指的母雞圖,還有Malaysian Chicken Curry的字眼。這家餐廳很清楚地表現了它的業務性質,而且非常明顯地與麥當勞有所不同。

Meidi-ya Ltd&Anor對壘Meidi(M)Sdn Bhd

McLaren International Ltd對壘Lim Yat Meen
這起案子,著名的F1賽車隊McLaren International Ltd申請要求撤銷Lim Yat Meen注冊的McLaren名字。此項注冊是在“衣服類物品,包括靴、鞋子和涼鞋”的第25級(Class25)項目下注冊。賽車隊提出的數項理由中包括了:
(二)Lim Yat Meen不是有關商標的擁有者。
Lim Yat Meen表示他自1992年開始,就使用McLaren這個名字了生產鞋子,而且他並不知道有個叫McLaren的F1賽車隊,而當年,McLaren International Ltd也沒有在大馬設立任何公司。
McLaren International Ltd在高庭失敗了,就到上訴庭去上訴。上訴庭駁回了有關上訴,並認為既然McLaren International Ltd在Lim Yat Meen注冊這名字前,並無在大馬使用有關名字,因此Lim Yat Meen有權處理他注冊的有關名字。
上訴庭認為,Lim Yat Meen根本不必做些不實際的行動,如到全世界去搜查或詢問有關商標名字的擁有者是否要來大馬注冊。一名奉公守法的業主,不必因為某些外國公司提出無理的商標要求,就回避或停止業務。

Microsoft Corporation對壘Yong Wai Hong

IEV International Pty Limited對壘Sadacharamani a/l Govindasamy

答:1987年版權法令(Copyright Act 1987)。
問:私人及自用(private and domestic use)是甚麼意思?





Bread & Kaya: Start-ups, get your house in order

My 4th Bread & Kaya’s column was published on Digital News Asia on 3 April 2013.

Bread & Kaya: Start-ups, get your house in order

– There are a number of things you need to get done before potential investors do due diligence on your start-up
– Seek advice from others, ensure any legal advice is professional, and do due diligence on your investor as well

Bread & Kaya by Foong Cheng Leong
3 April 2013

WHEN I was in high school, I invested a few thousand ringgit on a web-hosting company operated by a ‘friend.’ Unfortunately, the web-hosting company didn’t materialize and I never saw my money again, nor the ‘friend.’ In fact, there was no such web-hosting company!

That was my first failed investment. Looking back, I realized that the investment was purely done by trust. I did not do any background check on the company or even the ‘friend.’

But years later, I was approached by a stranger (at that time) to help his start-up by providing my services to him, in return for shares in his company. I did not invest a single ringgit. I am glad to report that the start-up is doing well, with offices around South-East Asia and other parts of the world.

Today’s column sets out some tips before opening your start-up for funding.

Before you think about attracting investors, you need to get your house in order. Prudent investors would usually do an in-depth due diligence of your company to see, among others, what assets and liabilities you have.

They will check your background, hence you need to make sure it’s squeaky clean. They will obtain a company search report from the Companies Commission of Malaysia to verify the details of your directors and shareholders, shareholding structure and financial reports – so make sure you file your reports on time.

They will also go through your memorandum of association and articles of association (documents that are required before incorporating a ‘Sdn Bhd’). Take some time to read them and amend if necessary. Board and shareholders minutes will also be part of due diligence exercise.

Investors usually come with high expectations. Thus, educate your investors of the nature of your business and industry, business plans, goal, competitors and obviously, monetizing strategy. Over-promising will create legal trouble for you.

When meeting your investors, appoint someone presentable who speaks well to deal with them. This raises investor confidence.

Other than your financial records and information, here are some common matters that should be addressed before the due diligence stage.

1) Intellectual property rights

Intellectual property rights generally refer to your trademarks, copyright, industrial designs, confidential information and patents.

Start-ups generally file their trademarks first as it is affordable. If you have a physical product and the design is new, do consider filing an industrial design to protect the design.

Patents are usually not filed due to budget constraints. A patent application (with the assistance of a patent attorney) costs at least RM5,000 and above. However, if the invention is novel and you think it’s worth protecting, do file it within one year otherwise it will not be afforded protection.

You can file for protection with the Intellectual Property Corporation of Malaysia (MyIPO), or if your business or operation extends to other countries (e.g. Singapore), you should register your rights there too.

A registered intellectual property right gives you the exclusivity over your product, thus you may stop others from using them. Also, the Income Tax (Deduction for Expenditure on Registration of Patent and Trade Mark) Rules 2009 provides tax deduction for the registration of trademarks and patents in Malaysia for certain start-ups.

2) Proper contracts

All terms and conditions between the founders, with merchants, customers, vendors and employers must be properly spelled out. For existing contracts, review them to see whether they are still applicable or have to be changed or terminated.

Here are a few tips:
– In your agreements with customers, investors will look on how revenue is generated and to find any unfavorable terms, etc. Do make sure your contracts (or invoice or receipt) with service providers (e.g. graphic designer, website, software) do not state that intellectual property rights (in particular, copyright) belong to them (by default, intellectual property rights belong to the person who commissioned the work, unless stated otherwise). Such contracts should describe the subject matter in detail and that the rights to the intellectual property are properly assigned to your company.
– If you are using a website or a software application to deal with your customers, put terms of use or services and a privacy policy in place as required by the Consumer Protection (Electronic Trade Transactions) Regulations 2012. Do not rip off terms of use or services and a privacy policy of others as those agreements are drafted specifically for their businesses.

3) Non-disclosure agreement

Before opening your door to investors, do get them to sign a non-disclosure agreement (commonly known as an NDA). This agreement is crucial in making sure that they do not misuse the information they gathered from the due diligence. Such information may include your finance information, source codes and customer data.

Your investors may also want to look into the source codes of your proprietary software. Although an NDA may be signed to protect it, you may want to take an extra step to request that the software due diligence is done by an independent third party.

Also, when dealing with your vendors or employees, get them to sign a NDA. Your information is your asset.

4) Employee matters

If you have employees, make sure that there are employment contracts. If you have promised the employees something (e.g. equity), make sure you state it in writing. Ensure that you have been contributing to statutory contributions such as the Employee Provident Fund (EPF) and Social Security Organization (Socso).

This guide is a non-exhaustive basic guide and merely an idea on what you need to do before attracting investors. Do seek out advisers or mentors for help and advice. Get an experienced lawyer when dealing with terms and conditions. Speak to other fellow entrepreneurs who have done it before for advice.

Most importantly, do due diligence on your investor as well!

Industrial Designs (Amendment) Act 2013

The Industrial Designs (Amendment) Act 2013 will come to force on 1 July 2013.

In brief, the new amendment provides that a registered industrial design may now be collateralized. It also provide for consideration of public disclosure elsewhere than in Malaysia in determining the novelty of an industrial design. Prior to the amendment, an industrial design is not new if, among others, it was disclosed to the public anywhere in Malaysia.

The maximum duration of protection of a registered industrial designs will be extended to 25 years.

For more information, see Explanatory Statement of the Industrial Designs (Amendment) Bill 2013.

Protecting your Intellectual Property Rights in Malaysia

This article was published in the December 2012 issue of The Bridge, a quarterly magazine published by the Malaysia Canada Business Council.

In this article, Mr. Foong Cheng Leong briefly sets out the intellectual property rights protected in Malaysia.

Foong Cheng Leong is an Advocate and Solicitor of the High Court of Malaya and also a registered Malaysian trade mark, industrial designs and patent agent. He is also the co-Chairman of the Kuala Lumpur Bar Information Technology Committee and a member of the Malaysian Bar Council Intellectual Property Committee.

The recognition of intellectual property rights in Malaysia started as early as the 1800s during the Straits Settlement days. As the years go by, laws to protect intellectual property rights were expanded. Malaysian intellectual property laws are fairly similar with the laws of other Commonwealth countries and more or less in accordance with international practice.

Trade Mark

A trade mark is an important asset for all businesses. It consists of a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. It provides their owners with the legal right to prevent others from using an identical or confusingly similar mark.

In Malaysia, the laws that govern trade mark rights can be found under the Trade Marks Act 1976 and Trade Marks Regulations 1997. Trade mark proprietors can choose to protect their marks through the process of registration. This gives the registered proprietors exclusive right over the trade marks thus allowing them to take legal action against anyone who infringes their rights.

The trade mark registration process is administered by the Intellectual Property Corporation of Malaysia (also known as MyIPO. Website at ). Prior to filing an application, an applicant is advised to conduct a search at the Trade Mark Register to determine whether there are any identical or similar trade marks that were filed. Such search would be useful to the applicant to determine whether to use or file their trade mark in Malaysia.

Further, when deciding whether to register a mark in Malaysia, one must ensure that the mark is distinctive. A distinctive mark means a mark that is capable of distinguishing the goods or services of the proprietor from other traders.

The registration process in Malaysia normally takes about 1 to 2 years. Upon registration, the proprietor will be issued a Certificate of Registration valid for ten (10) years and it is renewable every ten (10) years.


Copyright protects various type of works such as literacy works which covers novel, lyrics, articles, computer program and so on; dramatic works such as dance choreography; artistic works such as paintings, photographs or any logos, drawings; musical works; recordings; broadcasts and finally, layouts. However, it does not cover procedures, methods of operation or mathematical concepts as such. The law regarding copyright protection in Malaysia can be found under the Copyright Act 1987.

Effective from 1 June 2012, it is possible to make a notification of copyright under the Copyright Act 1987 and Copyright (Voluntary Notification) Regulations 2012 with MyIPO. A notification of copyright can be made by the author of a work, the owner of the copyright in a work, an assignee of the copyright or a licensee of an interest in the copyright.

The notification of copyright will be prima facie evidence of copyright and is useful when dealing with copyright infringement proceedings.

Industrial Designs

Industrial designs right is an intangible right to the features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye. Industrial designs law is governed by the Industrial Designs Act 1996 and Industrial Designs Regulations 1999 in Malaysia.

However, industrial design does not include the method of construction of the device or features of shape or configuration of an article which are (1) dictated solely by the function which the article has to perform, or (2) dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.

An applicant may file an application to protect their rights with MyIPO. It must be highlighted that the applicant must file their industrial design first before they could disclose the same e.g by way of sale to the public failing which the design will not be considered as new.

A registered industrial design is given an initial protection period of 5 years from the date of filing and is renewable for a further two consecutive terms of 5 years each.


Patents are grants given to owners by the government which give the owner an exclusive right over the invention that they have created. Invention can cover product or processes. The protection also gives the owner the exclusive right to stop others from manufacturing, using and/or selling the owner’s invention in Malaysia without the owner’s consent or permission.

For the invention to be patentable, it needs to be new, involves inventive steps and industrially applicable. A “minor invention” can also be as an utility innovation granted provided that it is new and industrially applicable.

A patent and utility innovation can be protected by filing an application with MyIPO. A patent is protected twenty (20) years from the date of filing and a utility innovation is protected with an initial period of ten (10) years and is renewable for a two consecutive terms of five (5) years each.

Malaysia has acceded to the Patent Cooperation Treaty thus the PCT international application can be filed at MyIPO where MyIPO is acting as the Receiving Office for the international filing of PCT application.

Geographic Indications

A geographical indication helps to indicate the geographical origin of certain goods and possess unique qualities or characteristics that essentially represent the good’s place of origin. Basically, it points to the place where the goods or the characteristics of the goods are originated from. In Malaysia, “Sabah Tea’, ‘Tenom Coffee” and “Borneo Virgin Coconut Oil’ are registered geographical indication.

Only producers carrying on their activity in the geographical area specified in the Register shall have the right to use a registered geographical indication in the course of trade. The right of use be in respect of the products specified in the Register in accordance to the qualify, reputation or characteristic specified in the Register.

The current law in Malaysia that governs the protection of geographical indications can be found under Geographical Indications Regulations 2001.

Applicant can register geographic indications with the MyIPO. However, if the geographic indications are not found in Malaysia, then an agent shall be appointed in Malaysia. A registered geographical indication is given ten (10) years of protection from the date of filling and is renewable for every ten (10) years.

Confidential Information

Confidential information in this context usually means any information that is kept private and is not disclosed to the public. For examples, any new product design, trade secrets, software, business information, marketing strategy and so on.

There is no formal registration process for confidential information in Malaysia. It is possible to sue parties for breach of confidence.


All businesses that wish to invest or trade in Malaysia should consider registered their rights in Malaysia. As Intellectual Property rights are generally territorial, one should take all steps to secure their rights before investing or trading. For example, if a foreign entity discovers that a local company is trading in the same trade mark as the former and earlier than the former in Malaysia, the former should consider using another trade mark or purchase the said trade mark from the latter provided that there is no element of misappropriation.

The author would like to acknowledge Lim Chia Ann for her assistance in preparing this article.

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