Industrial Design

Introduction

 

Protection in Malaysia of the designs of industrially produced articles is governed by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which came into force on 1 September 1999. Under this registration regime, the owner of an industrial design may, upon filing and successfully completing an application, register the design in respect of a specified article with the Registrar of Industrial Designs.

 

Definition

 

An industrial design consists of features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which, in the finished article appeal to and are judged by the eye. An article means any article of manufacture or handicraft, and includes any part of an article that is made and sold separately.

Examples of articles the designs of which are registrable include furniture, toys, mobile telephones, electronic gadgets and appliances, household utensils, bottles, cases, carpets, wallpaper and textiles.

The definition of "industrial design" in the Act specifically excludes a method or principle of construction, which recognizes that the protection conferred is confined to the aesthetic appearance rather than any technical aspects that are more suitable for patent protection.

Also excluded from the legal definition of an industrial design are features of shape or configuration of an article which are (1) dictated solely by the function which the article has to perform, or (2) dependent upon the appearance of another article of which the article is intended by the designer to form an integral part. These exclusions are often referred to as the "must fit" and "must match" exclusions, respectively. They have been the subject of judicial comment in the United Kingdom. The reason for these exclusions is to allow for inter-operable products to be marketed and to prevent monopolies from being created over articles such as automobile spare parts. It should be noted that while such excluded features shall not be taken into account when assessing the registrability of a design, the existence of other novel features that are not so excluded may qualify the design for registration.

The layout design of an integrated circuit is not registrable under the Industrial Designs Act 1996. Instead, the protection of such a layout design is covered by the Layout-Designs of Integrated Circuits Act 2000.

 

Qualification for protection

 

An industrial design that meets the above definition qualifies for protection provided:

  • it is not contrary to public order or morality; and
  • it is "new".

For the purposes of registration, a design is not considered to be "new" if before the priority date of the application, it or a similar industrial design was disclosed to the public anywhere in Malaysia (so-called "local novelty"), or was the subject-matter of another registration in Malaysia having an earlier priority date and made by a different applicant.

Although registration is for the design applied to a particular article that is specified in the application, novelty is assessed based on the design per se and so can be destroyed by the prior application of the same design to a different article.

To cater for the fact that designers and industrialists often exhibit new designs at trade fairs and exhibitions prior to industrial exploitation or applying for registration of the designs, the Act specifically provides that an industrial design is not deemed to have been disclosed to the public solely by reason of the fact that within six months before the filing of an application for its registration, the design appeared in an official or officially recognized exhibition.

A design is also not considered to have been disclosed to the public solely by reason of the fact that within six months prior to the filing date of an application for its registration, it was disclosed by a person other than the applicant or his predecessor in title, as a result of an "unlawful act" committed by that other person or another person.

 

Priority under the Paris Convention

 

Malaysia is a signatory to the Paris Convention. If an application for registration of an industrial design is first filed in another Paris Convention country within the six months immediately preceding the filing date of the corresponding Malaysian application, the applicant may claim priority based on the earlier foreign application. In such an instance, the priority date of the Malaysian application is taken to be the date of filing of the foreign application in question for the purposes of assessing the novelty of the design.

On the other hand, if no priority is claimed, the actual filing date of the Malaysian application is treated as its "priority date" for the purposes of determining the novelty of the design.

A first design application, filed in Malaysia, may provide the basis for a priority claim for subsequent foreign applications that are filed within the 6-month priority period that starts from the Malaysian filing date.

 

Application for registration

 

An application for the registration of an industrial design may be made by the owner of an industrial design. In brief, an application is initiated by submitting to the Intellectual Property Corporation of Malaysia (MyIPO):

  • a completed request form (ID Form 1) signed by the owner or his duly appointed registered industrial design agent;
  • six identical representations of the industrial design, normally in the form of drawings or photographs showing several views of the design applied to the article in question;
  • unless the design is for pattern or ornament applied to a textile article, wallpaper or the like, a Statement of Novelty setting out the features of the design for which the owner claims novelty; and
  • the prescribed official fee(s).

The required forms may be downloaded from http://www.myipo.gov.my.

The above list of requirements is necessarily simplified. Various detailed requirements that must be met either at the outset, or before an application can proceed to registration, are set out in the Industrial Designs Act and Regulations. For this reason, it is strongly recommended to engage a registered industrial design agent to advise you on the protection of an industrial design and to represent you before the Registrar of Designs when your application is filed and examined. Many members of MIPA are registered industrial design agents.

 

Formal examination and registration of applications

 

After filing an application, it is examined for compliance with certain formal requirements as specified in the Regulations. In the event that the Registrar determines, in the course of examination that an application does not meet the formal requirements for registration, the Registrar is first required to notify the applicant and give him an opportunity to make observations on such finding and / or if appropriate to amend the application, within a specified time so as to comply with those requirements. If the applicant fails to do either within the time specified, the Registrar may refuse to register the industrial design, but only after the applicant has been given an opportunity to be heard.

Upon successfully responding to any examination objections, or in the event no such objections are raised, the design will proceed to registration. A certificate of registration will then be issued, and the details of the registration will be entered in the Register as well as published in the Government Gazette. An official fee is payable for each view of the design that is published in the Government Gazette.

On the other hand, an application which, owing to any default or neglect on the part of the applicant has not been completed so as to enable registration to be effected within 12 months from its filing date shall be deemed to be withdrawn.

 

Term of protection

 

The initial registration lasts for a period of five years from the filing date of the application. The period of registration may be extended for two further consecutive terms of five years each on payment of the prescribed official fees, for a total period of protection of fifteen years.

 

Exclusive rights

 

Registration confers on the owner the exclusive right to make, import, sell, hire or offer or expose for sale or hire, any article to which the registered industrial design has been applied. Infringement extends beyond the use of an identical design to applying a fraudulent or obvious imitation of the registered industrial design to any article in respect of which the design is registered.

The owner of a registered design has the right to institute legal proceedings against a person infringing any of the owner's rights conferred by registration, or who has performed acts which make it likely that an infringement will occur.

 

Copyright protection of designs

 

Previously, there was some scope for industrial designs to be protected under the law of copyright, for example as three-dimensional representations of two-dimensional works. In line with the coming into force of the Industrial Designs Act 1996, however, the Copyright Act 1987 was amended to eliminate dual protection by copyright as well as design registration. The amended Copyright Act now specifically provides that copyright does not subsist in any registered industrial design. In addition, copyright in any industrial design which is capable of being registered but has not been so registered, automatically ceases as soon as any article to which the design is applied has been reproduced more than 50 times by an industrial process, by the owner of the copyright, or his licensee.

Unlike the United Kingdom, Malaysia does not provide any specific protection for unregistered designs.

 

United Kingdom registered designs

 

Prior to 1 September 1999, industrial designs were protected in Malaysia by way of registration in the United Kingdom under the UK's Registered Designs Act 1949. The UK registration was then treated as extending to Malaysia under various enabling statutes.

This system was repealed when the Industrial Designs Act 1996 came into force, although it is still possible to maintain the protection conferred by UK registered designs granted prior to 1 September 1999. An application for renewal of such a UK registered design in Malaysia must be accompanied by evidence that the registered design has been maintained in force and renewed in the UK for the corresponding 5-year period.

In December 2005, the High Court of Malaya determined that UK registered designs granted prior to 1 September 1999 shall be entitled to protection in Malaysia for the full 25-year term available in the UK. This decision over-ruled previous official practice, under which the protection term was limited to 15 years in line with that for registrations under the Industrial Designs Act 1996.