Industrial Designs

– Industrial Designs Act 1996, in force since September 1, 1999, last amended by the Industrial Designs (Amendment) Act 2013, in force since July 1, 2013.
– Industrial Designs Regulations 2012, in force since February 15, 2012 (which repeals and replaces Industrial Designs Regulations 1999), amended by the Industrial Designs (Amendment) Regulations 2013, in force since July 1, 2013.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since January 1, 1989.
– Convention Establishing the World Intellectual Property Organization (WIPO), since January 1, 1989.
– WTO’s TRIPS Agreement, since January 1, 1995.

Filing and Examination

Definition: industrial design means features of shapes, configuration, pattern or ornament applied to an article by an industrial process or means being features which in the finished article appeal to and are judged by the eye. It does not include: (1) a method or principle of construction; or (2) feature of shape or configuration of an article which are dictated solely by the function which the article has to perform or 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.

Applicant: the author or originator of the industrial design or his assignee. Co-originators may jointly apply.

Not protectable: industrial designs that are contrary to public order or morality.

Novelty: a design to be protected must be new. It will not be regarded as new if, before the priority date of the application, it or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade, was disclosed to the public in Malaysia or elsewhere, or was the subject matter of another application of another person in Malaysia but having an earlier priority date that has matured into registration.

Excluded public disclosures: disclosures in official or officially recognized exhibitions and unauthorized disclosure by any third party as a result of an unlawful act by the disclosing party will not defeat novelty if made within six months before the filing date.

Multiple applications: possible, if they relate to the same class of the International Classification or to the same set or composition of article.

Same industrial design in respect of different article: an industrial design registered for a given article cannot prevent another application by the owner to have the same industrial design registered for one or more other articles. Likewise, a registered design cannot prevent the owner from registering the same design in respect of other articles with modifications or variations not sufficient enough to alter the character or identity of the registered design.

Priority: according to the Paris Convention. The Malaysian application has to be filed within six months of earlier filing if priority is claimed.

Associated application: if the application is for registration of an industrial design which has already been registered in respect of one or more articles, or consists of a registered design with modifications or variations not sufficient to alter the character or to substantially affect the identity of the industrial design, the application may be filed as an associated application and the applicant has to provide in support of the associated application the number of the registration already granted or application already made.

Division of application: if an application consists of two or more industrial designs, the applicant may whilst the application is still pending, divide the application into divisional applications. The divided application will be accorded the same priority date as the initial application.

Filing requirements for an application (to be sent to resident agent):
1. The applicant’s particulars. Where the applicant is not the author, the author’s name and address, together with a statement justifying the applicant’s right to the design;
2. Appointment of agent form;
3. The class or subclass in accordance with the International Classification;
4. A statement of novelty;
5. 1 copy of the representation of an article to which the industrial design is applied upon (previously the requirement was 6 copies);
6. Priority documents, if any;
7. The prescribed fee;
8. The number of views to be gazetted shall be stated in the form of application for registration of an industrial design.

Electronic filing: an electronic filing system has been put into place and applications may now be filed online.

Electronic signatures: Malaysia recognizes the legal effect of electronic signatures, however, POAs cannot be signed electronically, and it is advised that documents for IP filing purposes to be signed manually. Scanned copies of signed documents are accepted, but the original must be sent as soon as possible.

Ownership: the author is the original owner. Subject to any contrary agreement, the owner is the person commissioning the industrial design and the employee.

Designs by employees and designs created under commission: unless there is an agreement to the contrary, a design created by an employee or under commission is deemed to belong to the employer or the person who commissioned the creation of the design.

Assignment and transmission: the rights to an industrial design or the right to apply for registration may be assigned. Such right may also devolve by transmission.

Computer generated industrial designs: where an industrial design is generated by computer in circumstances such that there is no human author, the person by whom the arrangements necessary for the creation of the industrial design are made is deemed to be the author.

Examination: with respect to the formal requirements and as to novelty.

Granting and Protection

Registration and publication: upon the formal requirements having been met, the industrial design is registered and the registration certificate issued. As soon as possible thereafter, the fact of the registration is published in the Official Journal. The certificate of registration is prima facie evidence of the facts therein stated and of the validity of the registration. 

Opposition: not provided for.

Duration – extension: five years from the filing date, renewable for four further five-year terms.

Duration of prior existing U.K. registered designs: designs registered in the U.K. and protected in Malaysia before September 1, 1999, may be extended at five yearly intervals for a maximum of twenty-five years.

Grace period: renewal fees are due every five years with a grace period of six months for late renewals (with surcharge).

Restoration: industrial designs that are gazetted as having lapsed for want of renewal may be restored within one year of the publication in the Official Journal. A further surcharge is levied. A statement setting out the circumstances that led to the failure to renew must be submitted. The Registrar’s intention to restore is published in the Official Journal and such intended restoration may be opposed by any interested party within three months.

Rectification: possible at the instance of any person aggrieved by or interested in the non-inclusion in or omission from the Register of an entry, or by or in any entry made in the Register without sufficient cause, or an entry wrongfully remaining on the Register, or any error or defect in any entry in the Register. The Court may make such order for including, making expunging or varying such entry or for the correcting of any such error or defects as it deems fit. The Registrar himself may apply for rectification in cases of fraud in the registration, assignment or transmission of any rights relating to the design. It is also a ground for revocation if the design is not new as at the priority date or if its registration has been procured by unlawful means.

Owner’s rights: the registered owner has 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 sales or hire any article to which the registered design has been applied.  

Assignment or transmission in respect of a registered industrial design shall have effect against third parties only if recorded in the Register. 

Infringements: the following acts, if carried out without the registered owner’s consent, would constitute infringement, namely (a) application of the industrial design or any fraudulent or obvious imitation of it to any article for which the registration is granted; (b) imports into Malaysia for sale, or for use for the purposes of any trade or business, any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the license or consent of the registered owner; or (c) sells or offers or keeps for sale, or hires, or offers or keeps for hire any infringing article.

Limitation period: the limitation period is five years from the act of infringement.

Imminent infringement: any preparatory acts performed, which make it likely that an infringement will occur, are actionable.

Right by licensee and beneficiary of compulsory license to commence action: if notice had been given to the owner and he refuses to commence action, the licensee or the beneficiary of the exclusive license may commence an infringement action. The owner may however join in the proceedings.

Innocent infringement: the Court may refuse to award damages or to make an order for an account of profits if the defendant is able to satisfy the Court that (a) at the time of the infringement, he was not aware that the industrial design was registered; and (b) he had prior to that time taken all reasonable steps to ascertain whether the industrial design had been registered.