Malaysia: One Belt One Road brings opportunity and risk
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Malaysia: One Belt One Road brings opportunity and risk

One Belt One Road (OBOR) is a government initiative proposed by China's President Xi Jinping in September 2013 for joint economic development spanning 65 countries. OBOR is a proposed economic belt along the land-based historic silk road and the 21st Century maritime silk road from Asia to Europe, through South East Asia, South Asia, Central Asia, West Asia and the Middle East. This initiative aims to improve connectivity and cooperation between countries in this region in order to promote trade exchanges in this area. This briefing examines intellectual property strategies that may be adopted by foreign companies, particularly by Chinese companies trading in Malaysia to keep their IP risks under control.

The general principle that IP is territorial in nature essentially means that IP protection will only be accorded to the rightful proprietor in the jurisdiction where the IP rights are granted either through registration, or use, or in any other manner provided under the relevant laws of the particular jurisdiction. One cannot claim legal protection elsewhere other than in the jurisdiction where the IP rights are registered or recognised. For example, a patent or trade mark registered in China will not be entitled to protection in other countries or regions such as Malaysia.

Cost has been a long-standing concern for most companies when it comes to protecting their IP rights. It has always been a top priority for rights owners to consider the most cost-effective IP protection strategies. While it is understandable for rights owners to file what they need, they have to learn the importance of protecting their IP rights, rights they cannot afford to lose. Based on the statistics from the Malaysian Intellectual Property Office, the top applicants for various IP rights in Malaysia were, among others, the USA and Japan.

Patent and utility innovation

Trade marks

Country

Number of applications

Country

Number of applications

USA

1941

USA

1941

Japan

1443

Japan

144300%

Malaysia

1375

Malaysia

1375

Germany

490

Germany

49000%

Switzerland

341

Switzerland

341

South Korea

247

South Korea

247

China

246

China

246

United Kingdom

245

United Kingdom

245

France

215

France

215


It is surprising to note that China, as Malaysia's largest trading partner was only ranked number seven for both trade mark and patent filings in Malaysia. This is below some of the countries that are not major import partners of Malaysia.

Not only is IP registration the prima facie evidence of ownership of IP rights but such registration is of utmost importance when it comes to enforcing IP rights through the criminal route. The relevant enforcement authorities must be satisfied that the complainant has in fact obtained registration and is entitled to the protection of IP rights in Malaysia before they commence any action. The rights owners must always play an active role in protecting and enforcing their IP rights. This can be done by devising an effective IP enforcement strategy in Malaysia which includes, but is not limited to, customs and border enforcement measures as well as diligent internet monitoring in view of seamless cross-border trade. Parallel to enforcing IP rights through criminal action, the rights owners should exercise their civil rights including, but not limited to, sending a cease and desist letter and/or commencing court action against the infringer. Active enforcement of your IP rights will certainly discourage violation of your IP rights by unauthorised third parties in Malaysia.

With great opportunities come great risks. While capitalising on the opportunities that the OBOR initiative provides, the associated IP risks must not be overlooked.

ying.jpg

Lee Chiao Ying


Shearn Delamore & Co7th Floor, Wisma Hamzah-Kwong HingNo 1 Leboh Ampang, 50100 Kuala Lumpur, MalaysiaTel: +603 20272727Fax: +603 20785625info@shearndelamore.comwww.shearndelamore.com

more from across site and ros bottom lb

More from across our site

Based on surveys covering more than 25,000 in-house lawyers, the series provides insights into what law firms must score highly on when pitching to in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tony Nguyen, who returned to Fish & Richardson this month after a year travelling overseas, tells Managing IP how and why he took the plunge
Tom Treutler, who previously managed the Vietnamese office of Tilleke & Gibbins, has joined East IP
Counsel discuss upcoming AI and data privacy legislation and what they’ve learned since Chile joined the Madrid Protocol
INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Julia Holden explains why, if she weren’t in IP, she would be directing and producing live English-language theatre
Gift this article