Malaysia provides an extensive range of protection to various types of intellectual property (IP) rights by way of statutory law. As a member of the World Trade Organization and a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), Malaysia recognizes the need for a strong and robust legal framework for IP protection in a developing country.

Conventional IP rights such as trademarks, copyright and patents have been protected for decades in Malaysia through ordinances introduced by the British colonial administration followed by statutes passed by the Malaysian Parliament after independence. Statutory protection was subsequently extended to industrial designs in the 1990s. In the post-2000 period, Malaysia continued to expand legal protection to unique or sui generis IP rights such as geographical indications, layout-designs of integrated circuits and plant varieties. These sui generis IP rights deal with subject matters which may not qualify for protection under the requirements of conventional IP rights but they are nevertheless valuable assets which can be commercialized to generate substantial revenue for proprietors that own them. This article will explore the scope of protection provided by Malaysia to such sui generis IP rights.

 

Geographical Indication

A Geographical Indication (“GI”) is currently protected under the newly enacted Geographical Indications Act 2022 (“GIA 2022”) which replaces the repealed Geographical Indications Act 2000. A GI is defined in the GIA 2022 as “an indication which may contain one or more words which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin”.  

A GI is required to be registered before it can be protected in Malaysia. Under Section 8(5) GIA 2022, a person who is eligible to apply for registration of a GI is:

(a) any person who is carrying on an activity as a producer in the geographical area with respect to the goods and includes an association of such persons; or

(b) a competent authority

A GI registration is valid for 10 years from the date of registration and can be renewed for further periods of 10 years. During the term of registration, the owner of a registered GI has the right to:

(a) use the GI in different ways, which includes making, importing, exporting, offering for sale, selling or using the GI in relation to the goods for which the GI is registered;

(b) authorize other persons to use the GI

Section 28 GIA 2022 further permits a producer carrying on an activity in the geographical area specified in the GI Register to have the right to use the GI in the course of trade.

There are also offences prescribed under the GIA 2022 which are punishable by imprisonment and/or monetary fine upon conviction. Such offences include falsely applying a registered GI to goods and importing or selling goods with falsely applied GI.

The GI Register is administered under the purview of the Intellectual Property Corporation of Malaysia (“MyIPO”) and it contains local and foreign GIs. Some of the well-known registered local GIs include Sarawak Pepper (pepper from the state of Sarawak), Sabah Tea (tea from the state of Sabah) and Harumanis Perlis (a type of mango grown in the state of Perlis). Foreign GIs which are already registered in Malaysia include Champagne, Cognac, Scotch Whisky and Parmigiano Reggiano.  

 

Layout-Design of Integrated Circuits

The Layout-Designs of Integrated Circuits Act 2000 (“LDICA 2000”) was enacted to protect IP rights that are present in semiconductor chips. Under Section 2 LDICA 2000, a layout-design refers to "the three-dimensional disposition, however expressed, of the elements of an integrated circuit and some or all of the interconnections of the integrated circuit or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture". It is pertinent to note that layout-designs are specifically excluded from the Industrial Designs Act 1996 to prevent overlapping of subject matters between layout-designs and industrial designs.

 

Similar to copyright, there is no registration requirement for the protection of layout-design. A layout-design is eligible to be protected under the LDICA 2000 once the following criteria are met:

(a) the layout-design is original; and

(b) the right holder of the layout-design was, at the time the layout-design was created, a qualifying person as prescribed under Section 6 LDICA 2000

 

Section 5(2) LDICA 2000 further provides that a layout-design is regarded to be ‘original’ if:

(a) it is the result of its creator's own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation; or

(b) in relation to a layout-design that consists of a combination of elements and interconnections that are commonplace, the combination, taken as a whole, is the result of its creator's own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.

 

The duration of protection accorded to a layout-design is a period of 10 years from the date the layout design is first commercially exploited in Malaysia or elsewhere. The total maximum period of protection which can be claimed for a layout-design is 15 years after the date of creation of the said layout-design. The owner of a layout-design that is protected under the LDICA 2000 has the following exclusive rights:

(a) the right to reproduce, and to authorize the reproduction of, all or a substantial part of his protected layout-design, whether by incorporation into an integrated circuit or otherwise; and

(b) the right to commercially exploit, and to authorize the commercial exploitation of, his protected layout-design, an integrated circuit in which the protected layout-design is incorporated or an article that contains an integrated circuit in which the protected layout-design is incorporated.

 

Plant Varieties

Agriculture plays an important part in driving Malaysia’s economy. There are constant efforts by Malaysia’s agricultural sector to develop new and improved plant varieties in order to increase productivity and enhance the quality of crop yield. However, there is no IP protection accorded to plant varieties in Malaysia initially as they were part of the list of non-patentable inventions stated in Section 13 of the Patents Act 1983.

When Malaysia became a signatory of the TRIPS Agreement, it had to reconsider another way to implement IP protection for plant varieties due to certain obligations that are present in the TRIPS Agreement. In particular, Article 27(3)(b) of the TRIPS Agreement requires member countries to provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof.

It is notable that Malaysia has opted not to join the International Union for the Protection of New Varieties of Plants (“UPOV”). Instead, Malaysia enacted its own legislation in the form of the Protection of New Plant Varieties Act 2004 (“PNPVA 2004”) to fulfil its obligations under the TRIPS Agreement. Apart from protecting the rights of breeders of new plant varieties, the PNPVA 2004 also aims to provide, amongst others, recognition and protection of contribution made by farmers, local communities and indigenous people towards the creation of new plant varieties. The Malaysian government hopes that the PNPVA 2004 will encourage investment in and development of the breeding of new plant varieties in both public and private sectors.  It is interesting to note that the PNPVA 2004 and the Plant Varieties Register are administered under the purview of the Department of Agriculture instead of MyIPO although the protection of plant varieties is essentially an IP matter. 

A plant variety can be registered and granted a breeder’s right under Section 14(1) PNPVA 2004 if the plant variety is new, distinct, uniform and stable. It is further provided under Section 14(2) PNPVA 2004 that where a plant variety is bred, or discovered and developed by a farmer, local community or indigenous people, the plant variety may be registered and granted a breeder’s right if the plant variety is new, distinct and identifiable.

A holder of breeder’s rights under the PNPVA 2004 is granted exclusivity to carry out various acts in respect of the registered plant variety on a commercial basis including producing or reproducing, conditioning for the purpose of propagation, offering for sale, marketing, selling, exporting, importing and stocking the material for the aforementioned purposes. The duration of the breeder’s exclusive rights takes effect from the filing date of an application to register the plant variety and it subsists for a period of:

(a) 20 years for a registered plant variety that is new, distinct, uniform and stable; or

(b) 15 years for a registered plant variety that is new, distinct and identifiable

Where an application for the registration of a new plant variety and grant of breeder's right is made in respect of trees or vines, the duration of protection can last for a total period of 25 years.

 

Conclusion

Sui generis IP rights such as geographical indications, layout-designs of integrated circuits and plant varieties should not be overlooked merely because they are less well known as compared to conventional IP rights. The growing demand for semiconductor chips may prompt many technological companies in Malaysia to look into the provisions in the LDICA 2000 in greater detail as they consider strengthening the IP protection of their products. Similarly, the current trends of ESG compliance and biodiversity conservation may generate greater interest from local and foreign companies to consider registering GIs and new plant varieties in Malaysia. These sui generis IP rights can certainly play a bigger role in enhancing Malaysia’s economy in years to come.

If you have any questions or require additional information, please contact Stanley Lee Wai Jin or the partner you usually deal with at Zaid Ibrahim & Co.

This article is for general information only and is not a substitute for legal advice.