We provide professional advice to local and foreign owners of industrial designs on industrial design protection, and handle the filing and prosecution of industrial design applications on their behalf on a day-to-day basis. We take it a step further by working closely with clients and effectively advising them on the areas of infringement of designs, licensing and cross-licensing their creative or innovative designs and more, to ensure each step they take is relevant to their business activities.
What designs are registrable?
Industrial Designs cover features of shape, configuration, pattern or ornamentation applied to an article by any industrial process to make it appeal to the eye, but does not include:
1. a method or principle of construction; or
2. features of shape or construction of an article which:
a. are dictated by the function which the article has to perform (i.e., functional); or
b. are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.
An “Article” can mean:
- any article of manufacture or handicraft, including any part of such article or handicraft if that part is made and sold separately,
- a set of articles,
- each article in a set of articles, and
- both set of articles and each article in that set, as the case requires.
Designs that are found to be contrary to public order or morality are not registrable.
Where an article or improvement to an existing article is made, and where the shape or configuration is novel, not required for the method or principle of construction, and not dependent upon the appearance of another article, but is functional and has been disclosed to the public within 12 months of the intended filing date, you may consider Utility Model protection, by filing an application for a Certificate of Utility Innovation (CUI), provided the article or improvement is not yet a subject of any or CUI application in Malaysia.
What are the novelty requirements for industrial design rights?
At the priority date, the industrial design should be new in that the design or a design differing from it only in immaterial details or in features commonly used in the relevant trade:
- was not disclosed to the public anywhere in Malaysia or in other countries (worldwide novelty); or<
- was not 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.
Novelty will not be destroyed if the public disclosure occurred within the 6 months preceding the filing date, whereby the design:
- appeared in an official or officially recognized exhibition; or
- 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.
What are the general requirements for filing a design registration?
To secure a filing date the following information is required:
- application form disclosing all the applicants,
- representations of the articles to which the industrial design is applied,
- filing fee
The following information can be filed later:
- representations of the article to which the industrial design is applied,
- the name of the author(s),
- the international classification,
- a statement of novelty in respect of the industrial design to which the application relates,
- a copy of the priority document certified as correct by the office with which was filed (if so required by the Design Office).
What are the rules of ownership for registered industrial designs?
The usual law on the distinction between original author and owner is adopted. However in the case of an industrial design generated by computer in circumstances such that there is no human author, the person responsible for the conditions necessary for the creation of the industrial design shall be taken to be the author.
What happens after the filing of an application?
Where a filing date is given and the application is not withdrawn, the application will be automatically examined, without the need for a specific request. If formalities are not complete, the applicant is given an opportunity to rectify the omission. The applicant is given an entrenched right to be heard by the Registrar before his application is refused for whatever reason. No substantial examination is conducted.
How long is a registered industrial design protected in Malaysia?
The term of protection of a registered industrial design varies around the world and was recently extended from 15 to 25 years in Malaysia. The initial period of registration is for 5 years, commencing on the filing date of the application. The latest change means that this period is then extendable for 4 further consecutive terms of 5 years each if an application is made before the expiration of the current term. A 6-month grace period is given to reinstate any lapsed industrial design registration subject to payment of a surcharge.
Where there is a failure to extend the registration within one year from the date on which the notice of lapse was published in the government gazette, the owner or his successor can apply to reinstate the registration, if failure to extend the registration was due to an accident or mistake. Restoration of a lapsed registration is subject to opposition proceedings by any interested person.
What rights does the owner of a registered industrial design have?
A registered design owner has exclusive right:
- to make,
- to import for sale or hire,
- for use for the purposes of any trade or business,
- to sell, hire or to offer, or
- to expose for sale or hire
any article to which the registered design has been applied.
What constitutes industrial design rights infringement?
As a general guide, infringement of Industrial Design Rights includes the unlicensed application of the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is applied.
Parallel imports for the purpose of sales, or for use for the purposes of any trade, or business from an unauthorised manufacturer also constitutes infringement.
Imminent infringement is actionable. The limitation period is 5 years from the act of infringement.