Malaysia

Legal framework

The protection of industrial designs in Malaysia is governed by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which came into force on September 1 1999.

The industrial designs law is a standalone regime and bears little similarity to the patent legislation. Applications undergo formal examination only, although objections of a substantive nature are occasionally raised. The Intellectual Property Corporation of Malaysia (MyIPO) also conducts a novelty cross-check of its own records for conflicting registrations, although the citation of prior art is rare. The nature of the formal examination system is such that most applications do proceed to registration.

The law was last amended in 2013, with major changes including a switch from local to worldwide novelty and extension of the term of protection of Malaysian design registrations from 15 to 25 years.

The 2013 amendments to the act also recognised registered designs as personal property capable of being mortgaged or otherwise used as collateral in financial transactions. Similar changes are expected for patents and trademarks in the future as part of official moves to develop a local IP market.

Malaysia is a member of the Paris Convention and the World Trade Organisation. Accession to the Hague Agreement is anticipated under the Association of Southeast Asian Nations Economic Community Blueprint commitments.

Unregistered designs

Malaysian law does not provide for an unregistered design right. Therefore, it is particularly important to register designs in Malaysia wherever possible. The new term of protection of 25 years should make design registration a more attractive option.

Registered designs

The current design registration law remains tied to the industrial age. An ‘industrial design’ is defined as features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, and which in the finished article appeal to and are judged by the eye.

An ‘article’ is defined as any article of manufacture or handicraft. It includes a part of such an article or handicraft only if that part is made and sold separately. An avoidance of doubt provision, introduced in 2000, excludes an integrated circuit or a mask for making one. Integrated circuit layouts are protected under separate legislation.

The protection of designs does not extend to any method or principle of construction, meaning that industrial design registration cannot be exploited to obtain patent-like protection, but rather is confined to the aesthetic appearance of a specific article. Features of shape or configuration that are dictated solely by function are discounted when assessing registrability of a design. Similarly, ‘must match’ features cannot contribute to registrability.

Finally, an industrial design that is contrary to public order or morality shall not be registrable. Local sensitivities are taken into account when assessing morality, noting that Malaysia has a multicultural society.

Although spare parts are not explicitly excluded from registration, this may well be the effect of the various exclusions contained in the definitions of ‘protectable subject matter’.

A straightforward application for a single design may be completed up to registration with a budget of around $1,000 if no objections are raised in prosecution. For a multiple application, each additional design after the first may add around another $500 to $600 to the overall costs. Upon registration, no further official fees are payable until the first renewal falls due five years later.

Procedures

An application for registration comprises:

• the completed application form;
• an original power of attorney;
• a statement explaining briefly the applicant’s derivation of title from the author;
• one set of representations of the design; and
• payment of the official fees.

If priority is claimed, a certified copy of the priority application and its verified English translation are required, although these may be submitted after the application date.

The representations consist of drawings or photographs showing several views of the design applied to the article. There is no prescribed minimum number of views, although these should be sufficient to show the whole design, particularly the novel features. If priority is claimed, there will normally be an objection if the views filed do not match those of the priority document. However, some minor deviations may be justifiable based on differing national practice.

The first sheet of the representations must carry a statement of novelty, which indicates the features of the design for which novelty is claimed. This statement is not a claim to what is protected, like a patent claim. However, it can be used to highlight particular features or to de-emphasise the importance of features shown in dotted lines. MyIPO generally prefers applicants to use standard wordings for the statement of novelty.

When filing the application, the applicant must indicate which views of the design are to be published in the Official Journal and annexed to the certificate on registration. An official fee is payable for each view published.

The application must name the article. Care should be taken when choosing the article name, since this is relevant to the question of whether a third party’s product may infringe. The applicant must also state the relevant class and sub-class according to the Locarno international classification.

An application may include multiple designs, provided that each design belongs to the same Locarno class. Apart from this limitation, the designs and the articles to which they are applied may be unrelated to each other. Each additional design attracts a further filing fee as well as publication fees. The different designs in a multiple application are protected independently and have individual registration numbers and certificates issued.

Upon filing an application, a serial number is allocated immediately. The application then proceeds to formal examination. If there are any objections, an adverse report will be issued, normally within three months. An extension of up to three months is also possible, upon payment of official fees.

An application will proceed directly to registration once it is found to be in order. The details of the registration are published in the Official Journal. There are no provisions for deferring publication upon registration. The only option available to an applicant that wishes to defer publication is to cause a delay in prosecution. However, an application that is not in order for registration within 12 months of the filing date, due to any default or neglect on the part of the applicant, shall be deemed withdrawn.

There are no provisions for opposition. Instead, any person may apply to the High Court for revocation of a registration on the grounds that the design was not new or the registration was procured by unlawful means. Revocation may be sought as an original action or by way of counterclaim in an infringement suit.

For the purposes of novelty, prior art consists of designs previously disclosed to the public, whether in Malaysia or elsewhere, as well as any design that is the subject of an earlier-dated Malaysian registration. Before July 2013, a local novelty standard applied, meaning that only prior disclosures in Malaysia counted under the first limb. However, the 2013 amendments to the act adopted worldwide novelty.

Although infringement requires the article to be the same as that set out in the registration document, novelty is assessed based on the design itself (ie, irrespective of the article to which it is applied). Thus, a design applied to one article will lack novelty over prior art consisting of the same design applied to a different article.

An earlier design need not be identical to the registered design in order to count as an anticipation. The registered design will still lack novelty if it differs from the earlier design only in immaterial details or in features commonly used in the relevant trade. The scope of protection will depend on the degree to which the registered design distinguishes over the prior art. An incremental design will have a narrow scope of protection, whereas a radically different design will cast a wider net over potential infringements.

An aggrieved or interested person may apply for rectification of the register. Such an application may be made to the High Court or the registrar, although the latter may refer the application to the High Court. Rectification of the register cannot be used as a substitute for revocation of a design, but rather only to add, delete or amend an entry in the register. An application for rectification can be opposed by the registered owner.

Enforcement

Legal process and remedies

There is a cause of action for infringement against a person that, without a licence from or consent of the owner of a registered design, applies the design or any obvious or fraudulent imitation thereof to any article in respect of which the design is registered; or imports, sells, hires or offers or keeps for sale or hire any such article.

Case law has held that ‘obvious’ means that it is immediately apparent to the eye that the offending design is an imitation. On the other hand, a ‘fraudulent’ imitation means that the offending design is not necessarily an obvious copy of the registered design; it may even contain differences engineered to disguise the copying, but which can nonetheless be deemed immaterial.

Apart from the registered owner, the plaintiff may be an assignee or licensee if it can prove that it previously requested the registered owner to sue and the latter refused or failed to act within three months. However, the owner’s right to join in such proceedings is not prejudiced. There is a statutory limitation period of five years from the act of infringement within which to commence action.

It takes about nine months from filing of a court action to setting down for trial. The entire proceedings until resolution may take around two years, depending on the complexity of the case.

Upon successful proof of infringement and defence of any counterclaim for revocation, remedies that the court may grant include damages or an account of profits. An injunction may also be ordered to prevent further or imminent infringement. The court may refuse monetary relief if the defendant satisfies the court that at the time of the infringement, it was unaware of the registration and had previously taken all reasonable steps to ascertain whether the design had been registered.

Case law

Over the years many High Court decisions have been favourable to registered design owners, including the following.

In CKE Marketing v Virtual Century the High Court took a robust view of novelty, indicating that for a generic product, it is the overall appearance of the article that must be assessed, rather than a feature-by-feature analysis.

In Anchorsol v Nehemiah Reinforced Soil the High Court upheld the registrar’s decision that the design of an anchorage lug for a retaining wall system had been validly registered. The court held that the design had eye appeal, did not consist of features of shape dictated solely by function and was novel. It noted that eye appeal was not negated by the fact that, in final use, the article would be hidden from public view.

Tropicana Products was the consolidation of six cases, four of which concerned Tropicana’s registered design for a cold drinks bottle. At first instance, the High Court found Tropicana’s design to be valid and infringed by the various defendants’ bottles, which were held to be obvious imitations. However, the Court of Appeal reversed and found that Tropicana’s design was invalid. An appeal to the Supreme Court was rejected.

In considering eye appeal, the Court of Appeal took the view that it was the drinks manufacturer, rather than the end consumer, to which the bottle had to appeal. Evidence of eye appeal from end consumers that had been presented at first instance was therefore deemed irrelevant. It is hard to see what difference this distinction really makes. A drinks manufacturer has a clear commercial interest in acquiring a bottle whose design is not only fit for purpose, but also attractive to end consumers, not to mention wholesalers and retailers along the distribution chain.

On finding that Tropicana’s design consisted of features dictated solely by function, the Court of Appeal opined that the test is an absolute one. It does not matter that other articles bearing different features of shape and configuration may also serve the same function; the question is only whether the features are designed to fulfil functional means. This broad-brush approach pays scant regard to the word ‘solely’ in the exclusion and the existence of design freedom.

Whether this appeal decision is a turning point from which a stricter standard of registrability will emerge will be monitored by design owners and practitioners in Malaysia in the coming years. However, the decision is marred by undue focus on technical issues to the detriment of a full and proper consideration of the aesthetic aspects.

Ownership changes and rights transfers

The original owner of a design may assign its rights, including the right to apply for registration, to any other party. The assignment must be in writing. If an application has been filed or the design has been registered, an application to record the change of ownership should be made to MyIPO.

Apart from an assignment, ownership changes by way of transmission or other operation of law and security interest transactions may be recorded. For a registered design, the application should be made within six months of the transaction date. Otherwise, the court may refuse to award costs to the new owner in an infringement action. For the purposes of recordal, a certified copy of the transaction document must be submitted. If the transaction is effected by an instrument chargeable with duty, the registrar must be satisfied that the instrument has been duly stamped.

An entry in the register will be made on approval of the application. A change of ownership shall have no effect against third parties unless recorded in the register. There are no provisions for recordal of licences.

Related rights

When the act came into force in 1999, simultaneous amendments were made to the Copyright Act 1987 that substantially reduced the application of copyright law to designs and, in particular, the making of three-dimensional articles. As a result, copyright law in Malaysia has become a barren ground for design owners to seek protection of their designs, and registration of designs under the act is highly recommended and often essential to secure meaningful protection.

As for overlap with trademark rights, Malaysian trademark law still takes a traditional and fairly conservative view of what constitutes a trademark. The registration of trademarks for the shape of goods is not common, although this may change when the Trademarks Act 1976 is finally modernised and Malaysia accedes to the Madrid Protocol.

Henry Goh & Co Sdn Bhd

217, Jalan Imbi

55100 Kuala Lumpur

Malaysia

Tel +603 2118 8688

Fax +603 2118 8777

Web www.henrygoh.com

 

Dave A Wyatt

Head of patent and industrial design department

[email protected]

 

Dave A Wyatt is an executive director and head of the patent and industrial design department at Henry Goh. He is a UK chartered patent attorney, a European patent attorney and a registered Malaysian patent, industrial design and trademark agent.

He is an active member of the Malaysian Intellectual Property Association and has served as a co-opted member of its executive committee. He is a fellow of the UK Chartered Institute of Patent Attorneys, a member of the Asian Patent Attorneys Association and the International Federation of Industrial Property Attorneys, and an associate member of the UK Institute of Trademark Attorneys. Mr Wyatt is also a member of the UK Institution of Engineering and Technology and a chartered engineer of the Engineering Council UK.