Industrial Designs
In Malaysia, industrial designs are
governed by the Industrial Designs Act
1996 (“IDA”) and the Industrial Designs
Regulations 1999
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What is an industrial design?
• Ornamental / aesthetic aspect of an article.
• May consist of:- 3 dimensional features e.g. shape & configuration of
an article;
- 2 dimensional features e.g. pattern & ornamentation.
• The design features must be applied to an article by any
industrial process/ means of which the features in the
finished article appeal to the eye.
Industrial Designs
What is a registrable industrial
design?
Section 12 of the IDA:(1) Subject to this Act, an industrial design shall not be
registered unless it is new.
(2) An industrial design for which an application for
registration is made shall not be considered to be new if,
before the priority date of that application, it / an
industrial design differing from it only in immaterial
details / in features commonly used in the relevant
trade:
(a) was disclosed to the public anywhere in Malaysia;
or
(b) was the subject matter of another application for
registration of an industrial design filed in Malaysia but
having an earlier priority date made by a different
applicant in so far as that subject matter was included
in a registration granted on the basis of that other
application.
(3) For the purposes of paragraph (2)(a), an
industrial design shall not be deemed to have been
disclosed to the public solely by reason of the fact
that, within the period of 6 months preceding the
filing date of an application for registration (a) it appeared in an official / officially recognised
exhibition; or
(b) it has been disclosed by a person other than the
applicant / his predecessor in title as a result of an
unlawful act committed by that other person/ another
person.
Industrial Designs
An industrial design is not
registrable if:• The aesthetic appearance of an article is not
significant / the design features differs only in
immaterial details;
• It is a method / principle of construction;
• The designs are contrary to public order/ morality;
• The designs of the articles concern exclusively with
how an article functions; and
• The designs of articles that are integral parts of other
articles and whose features are dependant upon the
appearance of other article.
Industrial Designs
Period of Protection?
Section 2 of the IDA
• Initial period of 5 years from the date of filing;
• Renewable for a further 2 consecutive terms of 5 years
each; i.e. 15 years.
• The Registrar will grant 6 months grace period if the
applicant fails to pay the extension fee and a surcharge
will be imposed.
• Failure to apply for extension & pay the extension fee
will result in the registration lapsing. However,
restoration of lapsed registration can be done by filling
a request within 1 year from the date on which the
notice of lapse was published in the Gazette.
Industrial Designs
Who can apply for design
registration?
• Original owner (either by themselves / through an
agent);
• An employer & person/ corporate body that
commissioned the creation of the design;
• A trustee;
• A foreigner.
STATISTICS
(Application and Registration of Industrial Design
From 1 September 1999 To July 2005 in Malaysia)
Year
1999
Application
Registration
Local
Foreign
Total
Local
Foreign
Total
81
123
204
0
0
0
2000
234
533
767
67
142
205
2001
324
445
769
144
468
162
2002
334
489
823
195
305
500
2003
337
484
821
434
695
1129
2004
341
596
937
412
461
873
2005
299
379
678
91
139
230
TOTAL
1950
3029
4999
1343
2210
3553
Industrial Designs
INFRINGEMENT
Section 32(2) of the IDA lists 3 acts that may amount to
infringement, namely:(1)applies the industrial design / any fraudulent / obvious
imitation of it to any article in respect of which the
industrial design is registered;
(2)imports into Malaysia for sale, / for use for the
purposes of any trade/ business, any article to which the
industrial design / any fraudulent / obvious imitation of
it has been applied outside Malaysia without the licence
/ consent of the owner; or
(3)sells, / offers / keeps for sale, / hires, / offers / keeps for
hire, any of the articles described in paragraph (a) and
(b).
Industrial Designs
INFRINGEMENT
Fraudulent imitation
Reproduction of a design with immaterial differences to
distinguish copying.
Obvious imitation
Refers to copying of a registered design but with minor
differences.
Malleys Ltd v JW Tomlin Ltd (1961)
35 ALJR 352
Court held: A finding of fraudulent imitation must require
something more because in such a case visual comparison
is not of itself sufficient to establish imitation; otherwise it
would be a case of obvious imitation. The element of
intention must also be satisfied. The degree of proof to
prove fraudulent imitation is higher than in the case of
obvious imitation.
Industrial Designs
REMEDIES
Section 35 of the IDA:1)Injunction;
2)Damages;
3)Accounts of profits.
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Delivery up & destruction of the infringing materials.
Industrial Designs
1) Injunction
The owner must satisfy the Court of 3 requirements,
namely:(a)There is a serious question to be tried (i.e. the case is
not frivolous & vexatious);
(b)The balance of convenience is in favour of the plaintiff;
and
(c)Damages if awarded will not be an adequate remedy.
Industrial Designs
2) Damages & 3) Accounts of
profits
Damages may be calculated on 2 bases:• On an account of profit.
The owner must prove that he has suffered actual
damage as a result of the defendant’s infringing act.
• Royalty calculation.
Determined based on the sale proceeds of the infringing
article sold by the defendant.
Industrial Designs
DEFENCES IN AN ACTION FOR
INFRINGEMENT
The IDA provides 2 types of statutory defences to
challenge an allegation of infringement, namely:1)
By challenging the validity of the registered design
(under Sections 34 & 27(1)); or
2)
By pleading innocent infringement (under
Section35(3)).
Idustrial Designs
DEFENCES IN AN ACTION FOR
INFRINGEMENT
1) By challenging the validity of the registered design
(under Sections 34 & 27(1)).
The validity of a registered design can be challenged
based on the following grounds:(a) Lack of novelty;
(b) Scope of novelty claimed by the registered proprietor;
(c) Prior publication; or
(d) Shape dictated solely by function.
2) By pleading innocent infringement (under Section
35(3)).
Section 35(3) of the IDA provides:The Court may refuse to award damages, / to make an
order for an account of profits, in respect of an
infringement, if the defendant satisfies the Court (a) that, at the time of infringement, he was not aware
that the industrial design was registered; and
(b) that, he had, prior to that time, taken all reasonable
steps to ascertainwhether the industrial design had been
registered.
Industrial Designs
How to file an application for the
registration of an industrial design?
Filing an application to register a design requires:• A completed application form (ID Form 1) in Malay or
English;
• Six set of representations of the article to which the
design is applied (drawings or photograph);
• A statement of novelty in respect of the industrial
designs to which the design is applied. (However a
statement of novelty is not required when registering
wallpaper, lace or textile articles); and
• Payment, in full, of the appropriate filing fee.
Where to lodge your application?
Industrial Designs Registry
Intellectual Property Division
Ministry of Domestic Trade and Consumer Affairs
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