Requirements
Design/ Requirements
1. Introduction
The Malaysian Industrial Designs Act 1996 (hereafter referred to as the “IDA 1996”) came into force on September 1, 1999, together with the Industrial Designs Regulations 1999. The coming into force of the IDA 1996 repeals the previously applicable Malaysian laws relating to registered industrial designs, namely United Kingdom Designs (Protection) Ordinance 1949 (West Malaysia) (Act 214), United Kingdom Designs (Protection) Ordinance of Sabah (Cap 152) and the Designs (United Kingdom) Ordinance of Sarawak (Cap 59).
There is now an administrative set-up in Malaysia for the processing and examination of industrial design applications.
Transitional Provisions
Granted Industrial Designs: Any registration protected under the United Kingdom Designs (Protection) Act 1949 shall subject, to the terms, conditions and period of validity specified in the registration, continue in force and have the like effect as if it had been granted under the IDA 1996.
Pending Applications: Where prior to September 1, 1999, any application was filed in the United Kingdom, and is pending registration, the applicant may within a period of 12 months make an application for the registration of the industrial design under in Malaysia under the IDA 1996.
2. The Filing in Malaysia for an Industrial Design
2.1 Filing Particulars Required
(a) Name, address, nationality and residence of applicant(s).
(b) Name and address of author(s).
(c) Statement Justifying the Applicant’s Right to the Registration.
Where the applicant is the author, the application shall contain
a statement to that effect. Where the applicant is not the author,
the application shall specify the author’s name and address, and
shall explain how the applicant acquired the right to the
registration. [This may be an informal explanation, which we shall
use as a basis to prepare the Statement].
(d) Priority Claim (if any) Paris Convention country, filing number,
filing date and the International Classification for Industrial
Design allotted. Certified copy of the priority application is not
required.
(e) The class or sub-class of the International Classification for
Industrial Design.
(f) Application for Registration of an Industrial Design [Industrial
Design Form 1].
(g) Six (6) Representations.
(h) Prescribed filing fee.
(i) Statement of Novelty. A statement relating to the representation
of an article to which the industrial designs is applied that indicates
those features of the representation in which novelty is claimed.
We shall prepare the Statement of Novelty.
(j) Common Representative/Appointment of Industrial Design Agent
[Industrial Design Form 10].
Note: The appointment of an Agent is mandatory where the applicant’s ordinary residence or principal place of business is outside Malaysia
Upon complying with the above (a) to (j), a filing date will be accorded by the Registrar.
3. Physical Requirements of an Industrial Design Application
3.1 Language
English language is the only other acceptable language besides the national Malay language. Where the application or any document forming part of an application is in another language, a certified translation and the name of the language shall accompany the application.
3.2 Documents
• Must be in strong A4 size paper (29.7cm x 21cm)
• Written on one side only
• Free from cracks, creases or folds
• Must be able to admit direct reproduction by photography, electrostatic
process, photo offset and microfilming, with representations appearing
on one side with a left hand margin of approximately 3 cm.
3.3. Representations
• Where Representations comprise of specimens, the specimens must
not exceed 20cm x 20cm x 20cm.
• The specimens may be replaced by Representations comprising of
drawings, tracings or photographs. The photographs and drawings
shall be of a size of 12.5cm x 9cm
• In an application where words, letters or numerals appear in an
industrial design, the Registrar may require that a disclaimer of any
right to their exclusive use shall appear on each representation.
3.4 Numbering of Industrial Design
Each industrial design shall be given a number. The numbering shall appear in the margin next to each representation.
3.5 Statement of Novelty
The Statement of Novelty shall appear only on the front of the first sheet of each representation. Where the Registrar feels that it is impracticable to do so, the statement will appear at a place specified by the Registrar, and shall be separated from any other statement or disclaimer.
3.6 Disclosure to be Disregarded as Prior Disclosure
Where the applicant knows at the time of filing, any disclosure which can be disregarded, it shall be stated in a statement accompanying the application or notifying the Registrar in writing as soon as practicable.
Note: These are formal requirements for the purposes of the IDA 1996
4. Prosecution of an Industrial Design Application
4.1 Accord of Filing Date
Upon receipt of the application for registration of an industrial design, the Registrar shall accord a filling date upon being satisfied that:
(a) the documents filed identify the applicant or applicants
(b) the prescribed number of representations have been filed
(c) the prescribed filing fee is paid.
If the above conditions are not met, the applicant will be notified. The correction must be made within three (3) months. Upon making the correction, the filing date accorded will be the date of the receipt of the required correction.
Note: Failure to do so and/or to comply within the three-month period will render the application null and void. The Registrar shall notify the applicant in writing.
Once a filing date is accorded, the Registrar shall send the applicant a Certificate of Filing in the form of a copy of the application form with the filing date and application number on it.
4.2 Examination of Formal Requirements
There is no examination on the merits of the application. The Registrar will examine the application to determine whether the formal requirements have been met.
If the Registrar determines that the formal requirements have not been met, the Applicant shall be given an opportunity to make the necessary amendments. In the case of a multiple applications, the part(s) of the application, which do not comply, may be excluded from registration.
The Registrar shall notify the Applicant in writing of his decision. If within the specified period of 3 months from the date of the application, the Applicant fails to satisfy the Registrar that the formal requirements have been met or to amend the application, the Registrar may refuse to register the industrial design.
The Registrar shall not refuse the application without first giving an opportunity to the Applicant to be heard.
Note: However, if the application is unable to be effected within 12 months from the date of the application and this is due to the default or neglect of the applicant, the application will be deemed withdrawn.
5. Registration of Industrial Design
When the Registrar is satisfied that the formal requirements have been met, a Certificate of Registration will be issued. [Section 22 of the IDA 1996].
The Certificate of Registration shall contain the following particulars [Regulation 20]:
(a) the Registration number
(b) the Registration date
(c) priority Date(s)
(d) the filing date
(e) the date of issue of the Certificate
(f) articles or set of articles in respect of which the Industrial Design is
registered.
The Registrar will also have in the Gazette published:
(a) A notice that the industrial design has been registered
(b) The name and address of the registered owner
(c) Any other matter constituting or relating to the industrial design,
which in the Registrar’s opinion is desirable to publish.
6. Registrability of an Article for Industrial Design
6.1 Industrial Design
An industrial design is defined in the IDA 1996 as being features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which the finished article appeal to and are judged by the eye, but does not include:
(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 or design is intended to form an integral part.
6.2 Article
An article is defined as being any article of manufacture or handicraft, and includes any part of such article or handicraft if that part is made and sold separately. A design is not for the article, but for something, which can be applied to the article, i.e., features of shape and configuration, pattern or ornament.
6.3 Function of Article
If the feature of shape and configuration purely serve a function, the article is not capable of being registered as an industrial design.
6.4 Judged by the Eye
The features of shape and configuration, pattern or ornament must have consumer or customer eye-appeal.
6.5 New
The industrial design seeking registration must be new. The industrial design in question is not considered new if it or an industrial design differing only in immaterial details or has features commonly used in the relevant trade was:
(a) made known to the public in Malaysia before the filing date of the
application or;
(b) was the subject of another industrial design application in Malaysia,
but having an earlier filing date.
6.6 Statutory Exemptions
An industrial design will not be considered as being made known to the public in Malaysia, if the application is filed within 6 months of the earliest date of disclosure, and that the disclosure was due:
(a) to an official or officially recognized exhibition or;
(b) that there was an abuse to the Applicant’s rights.
7. Multiple Applications
Two or more industrial designs may be the subject of the same application, provided that they relate to the same class of the International Classification for Industrial Designs or to the same set or composition of articles.
8. Priority
8.1 Any application may pursuant to any international treaty or
convention to which Malaysia is a party to may claim the
priority of one or more earlier national, regional or
international application filed by the Applicant or his
predecessor in title.
8.2 The Declaration of priority shall specify the date of the earlier
application, the number of the earlier application, the class and
subclass number in accordance with the International
Classification for Industrial Designs and the name of the country.
If the earlier application is an international or regional application,
the name of the country or countries and the office with which the
application was filed. If the Registrar so requests, a certified copy
of the earlier application will need to be submitted within three (3)
months from the date of the request by the Registrar.
[Regulation 14(5)].
9. Terms & Rights
9.1 Terms
The registration of an industrial design shall be deemed to have come into force on the filing date of the application for registration of an industrial design.
The registration shall subsist for 5 years with possible extensions of 2 further five-year periods.
9.2 Rights
The owner of a registered industrial design shall have the exclusive right to make or import for sale or hire, or for use for the purposes of any trade or business, or to sell, hire or to offer or expose for sale or hire, any article to which the registered design has been applied.
10. Assignment and Transmission
10.1 The rights of the owner of the registered design are capable of
being assigned or transmitted.
10.2 No assignment, transmission or other operation of law in respect of
a registered industrial design shall have an effect against any third
parties, unless recorded in the Register.
11. Infringement Proceedings
11.1 The owner of the registered industrial design shall have the right to
commence infringement proceedings.
11.2 Infringement proceedings may not be instituted after 5 years from
the act of infringement.
11.3 Infringement proceedings can be commenced by a person other
than the registered owner, provided that it can be proved that a
request was made to the registered owner, and the registered
owner has failed/refused to institute proceedings within three
months from the receipt of the request.
12. Innocent Infringement
12.1 The Court may refuse to award damages, or to make an order for
an account of profit if the Defendant can show the Court that:
(a) he was not aware of the registration
(b) and that all steps had been taken to ascertain whether the industrial
design had been registered.
12.2 It would therefore be advisable that upon the registration of the
industrial design, an advertisement be published in a
newspaper.
13. Amendment of Application
The Applicant may request the amendment of an application, provided that the amendment does not increase the scope of the application.
14. Divisional Application
If the amendment results in the exclusion of one or more industrial designs from the initial application, the Applicant may at any time during the pending period of the initial application, divide the initial application into a further application.
15. Withdrawal of Application
The application for registration of an industrial design may, by notice in writing to the Registrar be withdrawn at any time.
Note: The withdrawal is irrevocable
16. Rectification of Register
16.1 Any aggrieved person may apply to the Court for the rectification of
the Register.
16.2 A notice of the application must be given to the owner of the
registered industrial design.
16.3 The owner may elect to oppose the application by filing in the
prescribed form and paying the prescribed fee.
Note: An owner who does not file a notice of opposition shall be deemed to have no objection
17. Revocation of Registration and Grant of Compulsory License
17.1 At any time after the registration of an industrial design, any
person may apply to the Court for:
(a) the revocation of the registration on the ground of novelty or;
(b) cancellation of the registration on the ground the registration of the
industrial design has been unlawfully obtained;
(c) a compulsory license on the ground that the industrial design is not
being applied in Malaysia by any industrial process or means to the
article.
17.2 The application has to be made by notice of motion.
17.3 The application must be made within one month of the publication
in the Gazette.
17.4 A copy of the application must be given to the Registrar.