South-East Asia IPR Basics Series: Industrial Designs in Malaysia

creative picture4An industrial design is the ornamental or aesthetic aspect of a product and is handled by the Industrial Designs Registry at the Intellectual Property Corporation of Malaysia.

In today’s article we’ll be looking into the ins and outs of Malaysia’s Industrial Design laws.

An industrial design may consist of three-dimensional features such as the shape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. Examples of industrial designs would be the distinctive proportions and shape of an iPad, the patterning of a fashionable purse, or the body and doors of a car. These are all distinctive features of an item’s appearance. Some items which are not eligible for protection under industrial designs are:

  1. A method of principle of construction
  2. Features which are dictated by technical considerations (e.g. you cannot claim that your motorcycle’s design is special just because your motorcycle has two wheels; motorcycles require two wheels)
  3. Features which are dependent on the configuration of another item which is critically linked to your item. Essentially, if your item is designed a certain way because it needs to be designed that way in order to work with some other item, then you cannot patent that design
  4. All or part of an integrated circuit (they have a separate protection scheme)

Note that industrial designs only cover one appearance for an item. To cover multiple designs or patterns and colour schemes, you must make separate design applications. Note also that designs are for whole articles and cannot cover only part of an article unless that specific part is usually produced and sold separately.

Malaysia allows for multiple application industrial designs as long as all goods applied for belong to the same class of the Locarno International Design Classification. These are allowed to have different priority dates and authors for different designs but must share a common applicant. Each separate design will be given its own registration number, its own examination process, and its own registration certificate.

Finally, Malaysia allows applications for sets of articles, meaning articles which share one general character and are normally sold and used together (such as salt and pepper shakers which are packaged and sold together with the same design, or shampoo and conditioner kits). Applications for sets of articles require the same industrial design to be applied to each article. However, infringement upon any of the articles is punishable, even if not all of the set has been infringed.

Applications

Industrial designs in Malaysia have a worldwide novelty requirement, meaning that for a design to be registrable it must not have been disclosed to the public in any way at any time before the application. This is true for both the design and for any designs which are essentially identical and differ only in minor details. The only situations in which prior disclosure does not cause a design to be ineligible for registration based on novelty is when the disclose was made:

  1. In an officially recognised exhibition, or
  2. Unlawfully and by a person other than the applicant or his predecessor

Law firm Henry Goh advises that claims of novelty should be worded differently from claims of novelty used for patents. If worded similarly, industrial design claims could be mistaken for claims for methods or principles of construction or for multiple different designs, both of which would invalidate the design’s protection.

Filing requirements for an industrial design application in Malaysia are as follows:

  1. Information identifying the applicant and the author
  2. An appoint of agent form (ID Form 10)
  3. Information on assignment of rights to the design
  4. Representations of the design (preferably drawings and not photgraphs)
  5. A statement of novelty indicating why and how the design is novel
  6. The name of the article
  7. The class and sub-class of the articles to which the design is applied (based on the Locarno Classification)
  8. A designation of views to be published
  9. Information regarding any priority claim, the priority documents, and a certified English translation of the priority documents

Examinations and protection

Applications are given a formative examination to make sure all paperwork is in order but are not given a substantive examination (which would make sure that the content of the application is novel). However, occasionally substantive objections are raised by the examiners. Once the application is complete, a registration certificate is usually issued anywhere from six to twelve months after the filing. There are no official periods during which objections may be issued.

Industrial designs are protected for five years from the filing date of the application. If there is a priority date, this will likely be used instead as the starting date for the five-year period and as the date to determine renewal payments. Industrial designs can be extended for four additional five-year periods, meaning that total protection can last for up to 25 years. Industrial designs registered in the UK before September 1999 can be protected in Malaysia by filing applications for renewals in Malaysia based on the date of the UK registration.

Enforcement

Owners of industrial designs can fully exploit those designs as they will. Other individuals who are not authorised to use the design are prohibited from applying for any designs which are identical or too similar to registered designs; from importing any articles bearing the design; and from selling, stocking, or offering to sell or stock any unauthorised articles which bear the design. Infringements more than five years old cannot be the basis for enforcement actions.

Before taking civil or criminal actions, SMEs should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement.

Beyond mediation, the two main avenues of enforcement in Malaysia are the Enforcement Division of the Ministry of Domestic Trade, Cooperatives, and Consumerism (for criminal enforcement) and IP court litigation. Before any enforcement action, you should always gather proof of infringement.

In criminal enforcement with the Enforcement Division (ED), wrongful use of industrial designs can quickly yield goods seizures, injunctions, and prosecutions. To prepare for such actions, you should provide proof of infringement and a letter of complaint. After raids or product seizures, SMEs should assist the ED by providing identification and analysis of seized goods to prove infringement.

In litigation through IP courts, you can bring cases before specialised courts empowered to issue injunctions which immediately halt infringement and to assign unlimited damages to be paid to the rights owners. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines. These courts can also revoke a registered industrial design if you provide proof that the design is not new or that the registration was procured unlawfully.

Additional information

For more information on Malaysian IPR and how to best product your IP against infringement, check out the guides available at our Helpdesk website or contact one of our experts for free, tailored advice.

Samuel Sabasteanski
Project Executive, South-East Asia IPR SME Helpdesk

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