Understanding Intellectual Property

Intellectual Property (IP) is more than just a legal concept — it is the foundation of your brand identity, innovation, and competitive advantage. Whether you are building a recognisable trademark, developing new technology, creating original content, designing products, or expanding through franchising and licensing, choosing the right form of IP protection is critical.

Different IP rights serve different purposes. Trademarks protect brand identity, patents and utility innovations safeguard inventions, copyright secures creative works, industrial designs protect aesthetics, and trade secrets preserve confidential business know-how. In practice, many businesses require a combination of protections, tailored to their industry, growth strategy, and risk profile.

The FAQs below address common questions businesses ask when navigating IP protection in Malaysia and beyond — from trademark renewal and passing off, to employee inventions, software protection, trade secrets, and franchising requirements. They are designed to help you understand not just what protection exists, but why strategic planning matters.

Frequently Asked Questions (FAQs)

Trademarks

• Does trademark protection last forever?
A trademark registration is valid for 10 years from the date of filing. However, unlike patents which expire after 20 years, trademarks can be renewed indefinitely every 10 years. We manage these deadlines to ensuring your rights never lapse.

• Can I register a name that describes my product (e.g., “Best Coffee”)?
Generally, no. Marks that are “directly descriptive” of the quality or character of the goods are often refused registration. A trademark must be distinctive to identify your specific business. We can help you strategize a distinctive name or logo that has a higher chance of approval.

Patents & Utility Innovations

• What is the difference between a Patent and a Utility Innovation?
A Utility Innovation (UI) is often called a “petty patent.” It is suitable for minor improvements that may not meet the strict “Inventive Step” threshold required for a full patent. A UI is generally faster to grant and protects the invention for 10 years (extendable to 20 years), but it allows for only one specific claim.

• Should I patent my invention or keep it as a Trade Secret?
It depends. A patent gives you a monopoly but requires you to publish how your invention works. A Trade Secret (like the Coca-Cola recipe) lasts forever as long as it remains secret, but it offers no protection if someone else independently invents or reverse-engineers it. We can help you decide which route is better for your business.

• Who owns the patent if an employee invents it?
Under Malaysian law, if an invention is created by an employee in the course of their employment, the rights usually belong to the employer, unless there is a contract stating otherwise. It is crucial to have clear employment and IP assignment agreements in place to avoid disputes.

Copyright

• Should I protect my logo under Copyright or Trademark?
Ideally, both. A logo can be protected as an “artistic work” under copyright and as a “brand identifier” under trademark. Trademark registration is generally stronger for branding as it protects the brand name and reputation indefinitely (upon renewal), whereas copyright has a time limit.

• Can I copyright an idea or concept?
No. Copyright protects the expression of an idea (e.g., the written text of a book), not the idea itself. If you have a technical idea or functional invention, you may need Patent protection instead.

• Isn’t copyright automatic?
Yes, protection is automatic upon creation. However, without formal documentation, proving you are the original author during a lawsuit is difficult. Voluntary Notification provides official proof (prima facie evidence) that shifts the burden of proof to the infringer.

• Can I use someone else’s work if I credit them?
No. Giving credit does not absolve you of liability. You must obtain a license or permission from the copyright owner unless your use falls under specific statutory exceptions.

• Is my computer software protected?
Yes. Under Malaysian law, source code and object code are protected as “literary works”. This prevents others from copying your code, though it does not stop them from creating their own software that performs the same function using different code.

• Is my Malaysian copyright valid overseas?
Yes. Malaysia is a member of the Berne Convention. This means your copyright is automatically recognized and protected in other member countries without the need for separate registration in each country.

Industrial Designs

• What if my design is both functional and aesthetic?
Industrial design only protects the visual appearance. If a feature is “dictated solely by function” (i.e., it looks that way only because it has to work that way), it is not registrable as a design and may need Patent protection instead.

• Can I protect a spare part?
Generally, no. Features that are “integral parts” dependent on the appearance of another article (e.g., a car panel that must fit a specific car body) are often excluded from registration.

• What cannot be registered?
You cannot register designs that lack aesthetic appeal, features that are purely functional or designs that are contrary to public order or morality. You also cannot register a design that differs only in “immaterial details” from an existing one.

• Is Industrial Design the same as Copyright?
They can overlap, but they are different. Industrial Design requires formal registration and protects mass-produced articles. Copyright is automatic and protects artistic works. We can advise you on the “5W1H” (Who, What, Where, When, Why, How) to decide which protection is best for your product.

Passing Off & Business Reputation

• Is passing off as strong as trademark registration?
No. It is harder to prove because you must first prove you own the reputation. Trademark registration is always recommended as it provides prima facie evidence of ownership.

• What is the “First User” principle?
Malaysia generally recognizes the rights of the first user of a mark in the course of trade. This means if you used a brand name first (even if you didn’t register it), you may be able to stop a later party who tries to register or use it, provided you can prove your reputation.

• Can I sue for Passing Off if I already have a Registered Trademark?
Yes. It is common to plead both Trademark Infringement (under the Act) and Passing Off (under common law) in the same lawsuit. This provides a “double safety net”.

• Does Passing Off protect my business name?
Yes. Passing Off is very effective for protecting business names, company names and trading styles that may not be registered as trademarks but are well-known to the public.

• What constitutes “Goodwill”?
Goodwill is the attractive force that brings in custom. It is the value of your brand in the eyes of customers. We help you prove this through sales records, marketing expenditure and customer testimonials.

Trade Secrets

• How do I know if my information qualifies as a trade secret?
It must meet three criteria:
(1) It must be confidential;
(2) It must be commercially valuable; and
(3) You must have taken reasonable steps to keep it secret.

• Do I need to register trade secrets?
No. Trade secrets involve no registration costs and require no filing with MyIPO. Protection exists automatically as long as the secret is kept.

• What if a competitor figures out my secret on their own?
Trade secret law offers no protection against independent discovery or reverse engineering.

• Should I patent my invention or keep it as a trade secret?
Patents give you a monopoly but require public disclosure. Trade secrets keep information hidden but offer no protection against independent invention.

• Is it expensive to protect a trade secret?
While there are no registration fees, costs arise from maintaining secrecy, such as IT security measures and legal agreements.

Franchising, Licensing & Commercialisation

• What is the difference between Franchising and Licensing?
Licensing grants IP usage rights with flexibility and less control. Franchising involves strict operational control and mandatory government registration.

• Can I franchise my business without registering?
No. Operating an unregistered franchise is an offence under the Franchise Act 1998, and the agreement may be declared null and void.

• What is an OEM/ODM agreement?
These are manufacturing arrangements where you license your design or technology to a factory. Proper agreements ensure your IP is protected and not misused.

• Can I license my IP internationally?
Yes. International licensing requires careful structuring to comply with local laws. We coordinate with foreign counsel to ensure enforceability.

This article is written by 

Azarith Sofia Binti Aziz
Principal Associate, Low & Partners