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Industrial Designs

Industrial Designs In Malaysia, industrial designs are governed by the Industrial Designs Act 1996 (“IDA”) and the Industrial Designs Regulations 1999. P. What is an industrial design? Ornamental / aesthetic aspect of an article. May consist of:-

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Industrial Designs

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  1. Industrial Designs In Malaysia, industrial designs are governed by the Industrial Designs Act 1996 (“IDA”) and the Industrial Designs Regulations 1999 P

  2. 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.

  3. 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.

  4. (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.

  5. (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.

  6. 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;

  7. 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.

  8. 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.

  9. 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.

  10. 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.

  11. 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;

  12. (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).

  13. 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.

  14. 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.

  15. Industrial Designs REMEDIES Section 35 of the IDA:- 1) Injunction; 2) Damages; 3) Accounts of profits. + Delivery up & destruction of the infringing materials.

  16. 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)Damagesif awarded will not be an adequate remedy.

  17. 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.

  18. 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)).

  19. Idustrial Designs DEFENCES IN AN ACTION FOR INFRINGEMENT 1) By challenging the validity of the registered design (under Sections 34 & 27(1)).

  20. The validity of a registered design can be challenged based on the following grounds:- • Lack of novelty; • Scope of novelty claimed by the registered proprietor; • Prior publication; or (d) Shape dictated solely by function.

  21. 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.

  22. 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;

  23. 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.

  24. Where to lodge your application? Industrial Designs Registry Intellectual Property Division Ministry of Domestic Trade and Consumer Affairs N

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