Questions regarding the design law / practice in Malaysia

1. Legal Framework / Governing Law

1) What national laws govern design prosecution / registration (e.g., the Design Law)?

The Malaysian Industrial Designs Act 1996 and Industrial Designs Regulations 1999 governs design prosecution and registration in Malaysia.

2) Please let us know the amendment history of the governing laws.

The Malaysian Industrial Designs Act 1996 came into force on 1 September 1999.The enactment of the Malaysian Industrial Designs Act 1996 replaces prior laws which provides automatic extension for all UK Registered Designs in Malaysia.

3) Please let us know the name and location of the governing body for design in your jurisdiction (e.g., Japan Patent Office).

Intellectual Property Corporation of Malaysia (MyIPO), located at Kuala Lumpur, Malaysia.

2. Designs to be protected by the law

1) What is the definition of “design” stipulated by the relevant law?

The Malaysian Industrial Designs Act 1996 provides a comprehensive definition on Industrial Design.

According to Section 3 of the Act, industrial design is defined as 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, but does not include the following:-

(a) a method or principle of construction; or

(b) features of shape or configuration of an article which

(i) are dictated solely by the function which the article has to perform; or

(ii) 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;

2) Please advise if the following items can be protected (registered) as a “design” under the law in you jurisdiction:

a) A design or embodiment, the shape of which varies (changes)

For illustrative purpose, we indicate below one of the examples of this type of design (a toy which transforms into a car) which is registered in Japan.

Such a design would not be protected as it has two distinct features and are dependent upon the appearance of the other article.

b) Graphic designs / Icons

If the design or icons are part of the design article than it can be protected as pattern or ornamentation of that design.

c) Logos

We advise that such design may be conferred better protection under trademarks for 2D shapes.

d) Designs which are not visible from the outside of products (e.g., ink cartridges to be used in printers)

These types of designs are protectable but protection would only be for the specific embodiment (e.g. the ink cartridge) not the whole product. (e.g. the printer)

e) Designs which are not visible with the naked eye as being too small and fine in size (e.g., LED)

Designs such as these are protectable provided that the views filed are visible and clear. The actual size of the article is not an issue.

3. Legal Requirements for Registration

1) Criteria (definition) of “Novelty”. Please advice as to the circumstances for how a design is found not “novel” in your jurisdiction. In particular, please let us know if the novelty of a design can be denied based on a prior “identical” design belonging to an “identical” article (product), or if it is not necessarily an identical design and/or article (product) that leads to a denial of novelty.

An industrial design registered in Malaysia is only protected in Malaysia. In addition, only local novelty applies for registration of industrial designs in Malaysia as long as the said industrial design is new at the date of application for its registration is filed.

A design is considered to be new only if it has not been made available or disclosed to the public in any way whatsoever in Malaysia before the filing date of the application and it is not on the record of the Malaysian Design Registry.

Further, please advise what type of disclosures (e.g. publication, exhibition, internet, etc.) are regarded as legally sufficient prior art in your jurisdiction and if disclosure outside of your jurisdiction is acceptable.

Public disclosures other than disclosures which appears in an official or officially recognized exhibition within the period of six months preceding the filing date of an application for registration in Malaysia is regarded as legally sufficient prior art. The Malaysian Industrial Designs Act is silent on disclosures outside of Malaysia.

2) Lack of Novelty Exceptions. Please advice as to whether there are any exceptions if a design application lacks novelty (e.g., disclosure at exhibitions designated by the relevant government bodies, etc.).

Disclosures not affecting novelty of a design in Malaysia if:

a) Within the period of 6 months preceding the filing dates:-

i) the disclosure appeared in an official or officially recognized exhibition or

ii) the said disclosure is disclosed by a person other than the applicant or his predecessor in title as a result of an unlawful act committed by the said person other than the applicant.

b) The owner of a registered design makes an application to register the same design in respect of other articles.

3) Are there any other requirements for registration (e.g., individual characters, non-obviousness, inventive step, etc.)?

No. There is no further requirement for registration as long as it is new on the date of filing and is considered new only if it is not disclosed in any way.

4. Paris Convention

1) Please let us know the documents required to claim convention priority (e.g., priority documents, translation, etc.).

Certified True Copy of the priority document.

2) What are the deadlines to submit those documents?
To complete the formalities procedure, our advice is to submit the Certified True Copy of the priority document within three (3) months from the date of filing of the application.

5. Does your jurisdiction have the following types of applications available?

1) Multiple applications

Yes. The Malaysian Industrial Designs Act provides a provision for filing a multiple-design application wherein two or more industrial designs may be the subject of the same application, provided they relate to the same class of the International Classification (Locarno Classification) for Industrial Designs or to the same set or composition of articles.

2) Partial design applications

Not Applicable in Malaysia.

3) Secret design applications (deferment of publication)

The Malaysian Industrial Designs Act does not provide for deferment of publication of a Design.

A design will be published in the Gazette only upon registration of the said design. There is no pre-grant publication in Malaysia.

4) Related design (similar design) applications

Not Applicable in Malaysia.

5) Applications for a set of articles

Not Applicable in Malaysia. However, a set of articles of the same class of the International Classification (Locarno Classification) for Industrial Designs or to the same set or composition of articles may be filed as a multiple application.

6) Others which are unique in your jurisdiction, if any.

Not Applicable.

6. Forms and Drawings

1) Information to be indicated on application forms

In particular, please advise as to if the listed information below must be indicated in an application form, or if it is possible to supplement any of the information at a later date.

a. Applicant

b. Designer

c. Name of article

d. Locarno classification

We confirm that the above-mentioned information (a, b, c and d) needs to be indicated in the application at the time of filing.

2) Are there any other documents required for application (e.g., powers of attorney, assignments, notarization / legalization requirements, etc.)?

A duly executed Power of Attorney is required at the time of filing the application.

3) Requirements for Drawings

a. What are the drawings which are required by the law?

Photographs or drawings of perspective, front, rear, top, bottom and side views, the size of which must not exceed 12.5 cm in length and 9cm width.

b. Are photographs, drawings (photographs) in color, and other types of

representations acceptable?

It is acceptable as long as the said photographs or drawings are of perspective, front, rear, top, bottom and side views and the size of which must not exceed 12.5 cm in length and 9cm width.

Please be informed that color of the design will not be conferred protection in Malaysia.

7. Examination

1) Is a substantive examination conducted in your jurisdiction? If no, are design applications in principle examined only in relation to the formality requirements?

Only formalities examination applies in Malaysia.

2) If a substantive examination is conducted, are applications examined for all of the registration requirements indicated above?

Not Applicable.

3) What are the general procedures from filing up to registration and the time frame (deadline) to respond to office actions, if any?

a) Upon filing, a design number and date of application will be allocated.
b) Formalities Examination checks for completeness of application form and quality of representation.
c) If objection is raised, discussion via correspondence with the Examiner to overcome the objections.
d) If objections are maintained, the application will be refused.
e) If the objection is successfully overcome or if no objection arises, the application will  be successfully registered.
f) The time frame to respond to the office action is three (3) months from the date of mailing.
g) Upon registration, the application will be published in the Design Gazette.

8. Term of Registration

1) What is the length of a design registration term in your jurisdiction and from what date the term begins? For your information, in Japan a design registration lasts for 20 years from the date of registration provided that annuity payments are made in timely manner.

The Malaysian Industrial Designs Act provides a 15-year term protection for all registered Industrial Design with an initial protection period of five years and is extendable for a further two consecutive terms of 5 years each with payment of renewal fees.

Example:
Registration Date : 7 May 2010
Current Term : 07 May 2010 to 7 May 2015
2nd period : 7 May 2015 to 7 May 2020
3rd period (final): 7 May 2020 to 7 May 2025

2) Are renewals allowed in your jurisdiction, and if so, is there a limit on the number of renewals?

Yes. As stated in Answer for 8(1), the protection of a registered design is extendable for a further two consecutive terms of 5 years each with payment of renewal fees.

9. Opposition

1) Is there an opposition system in relation to design in your jurisdiction?
No. There is no opposition system in relation to designs in Malaysia.

2) If yes, please provide us with the general procedural guidelines for an opposition (e.g., when an opposition can be filed, the requirements for opponents, general time frame for determination, etc.).

Not Applicable.

10. Appeals / Trials

1) Please let us know the types of appeals / trials available. a. Revocation of a Registered Industrial Design.

b. Infringement of a Registered Industrial Design.

2) What are the general procedural guidelines for appeals / trials
(e.g., when an appeal can be filed/trial requested, who can file an appeal/request a trial, general time frame for determination, etc.)?

a. Revocation of a design is provided under Section 27 of the Malaysian Industrial Designs Act.

i. At any time after the registration of an industrial design, any person may apply to the Court for revocation of the registration of the industrial design.
ii. The general time frame : 12-24 months

b. Infringement proceedings of design is provided under Section 33 of the Malaysian Industrial Designs Act.

i. The owner of a registered industrial design shall have the right to institute legal proceedings against any person who has infringed or is infringing any of the rights conferred by the registration of the industrial design.
ii. Design infringement proceedings may not be instituted after five years from the act of infringement.
iii. The general time frame: 24-36 months

11. Customs Registration

1) Is it possible to register design applications or registrations at customs to prevent the importation of counterfeit products?No. It is not possible to register design applications or registrations at customs to prevent the importation of counterfeit products. All design applications must be registered with the Intellectual Property Corporation of Malaysia (MyIPO).

2) If yes, please provide us with the general procedural guidelines for the customs registration.
Not Applicable.

12. Protection by the Unfair Competition Prevention Law or similar laws

Are there any laws or regulations which provide legal protection for “a shape of product” other than the Design Law in your jurisdictions? (e.g., the Unfair Competition Prevention Law)

In Malaysia, there is no unfair competition for designs at the moment. However, a new Competition Act will be enacted in Malaysia in January 2012 which may provide regulations on Intellectual Property.

13. Database for Designs

Are there any databases publicly available to search the design applications / registrations in your jurisdiction? If yes, please provide us with the URL(s) for the database(s). https://iponline.myipo.gov.my/ipo/main/search.cfm

14. Costs (Official Fees)

Please provide us with the current fee schedules for design, in particular for the following:

1) Application
2) Office Actions
3) Oppositions / Appeals (Trials)
4) Registration

We enclose herewith our fee schedule for design for your perusal.

As for Item 14(3), our cost estimate for all design litigation will be based on complexity of the case. It will be a case by case basis.

15. Case Law

If there are any cases of importance in relation to designs which we should be aware of, please provide us with a brief summary of such cases.

• ARENSI-MARLEY (M) SDN BHD v. MIDDY INDUSTRIES SDN BHD (2011)

In deciding if a design is ‘new’ under Section 12 of Industrial Designs Act 1996;

I. It is the court’s first visual impression that matters, although consideration is given to the knowledge and experience of the relevant group, but not members of the public.

II. The design must be looked at in its entirety and not by mere reference to its composite parts or features.

• ANCHORSOL SDN BHD v. NEHEMIAH REINFORCED SOIL SDN BHD (2008)

The court decided that based on Section 3 of the Industrial Designs act 1996, to qualify as an Industrial Design, the following factors must be present:

(a) the design must not be dictated solely by function ie, the relevant features of the shape were brought about only by, or attributable only to, the function which the articles in that shape is to perform.

(b) the object of the Act is to protect shape not function, and not to protect functional shape.

(c) the design must 'appeal to the eye and be judged by the eye'.

Further on whether a particular Design was novel in light of prior art with regards to Section 12 of the Industrial Design Act, the court held that;

In a developed or "crowded" field of technology, the requirements of novel shape and configuration to qualify for an industrial design right are satisfied when the articles have minor differences and where there is freedom to design. The registrars in Malaysia are aware of this "crowded" field issue and therefore allow articles with minor but material differences to co-exist in Malaysia.

16. For more information, contact us at: malaysia@mirandah.com