A throw of Dice : Determining The Life Of A design

An update on the maximum protection available to designs registered in Malaysia in relation to UK originating designs. Do they attract a maximum renewal of up to 3 or 5 periods?


An update on the maximum protection available to designs registered in Malaysia in relation to UK originating designs. Do they attract a maximum renewal of up to 3 or 5 periods?

 

 

Shachihata Inc. & 19 Ors v. Registrar of Industrial Designs & The Intellectual Property Corporation of Malaysia (unreported)

The Plaintiffs are the owners of industrial designs registered under the Registered Designs Act 1949 of the United Kingdom.

 

During the period from 1.3.2004 to 25.5.2005, the Plaintiffs’ UK Registered Designs fell due for renewal in the United Kingdom. During the same period of time, some of the Plaintiffs applied for an extension of the period of registration of the Registered Designs for a further period of 5 years in Malaysia (“Extension Applications”).

The protection accorded to industrial designs in Malaysia would generally be governed by the Industrial Designs Act 1996 (“the Act”) and the Industrial Designs Regulations 1999 (“the Regulations”), both of which came into force on 1.9.1999.

 

However, prior to the enactment of the Act, industrial designs in Malaysia were protected by three statutes, namely the United Kingdom Designs (Protection) Act 1949 in West Malaysia, the United Kingdom Designs (Protection) Ordinance in Sabah and the Designs (United Kingdom) Ordinance in Sarawak (collectively, “the Repealed Laws”).

 

The offices of the Registrar of Industrial Designs rejected the Plaintiffs’ Extension Applications and informed the relevant Plaintiffs that the Registered Designs could only be extended for two terms (i.e. the 2nd and 3rd periods of registration). They further said that there are no provisions in the Act for extension of the period of registration for the fourth and fifth periods.

 

The position taken by the Registrar of Industrial Designs affected the rights of several proprietors of industrial designs in Malaysia. Messrs. Skrine decided to represent the affected parties on a pro bono basis to seek a declaration from the Court. The Plaintiffs filed an Originating Summons dated 15.7.2005 in the High Court of Malaya at Kuala Lumpur, naming the Registrar of Industrial Designs and the Intellectual Property Corporation of Malaysia as Defendants, seeking an order that, inter alia, the Extension Applications under the Act be allowed. (See final paragraph to understand the reason for the urgency)


PLAINTIFFS’ MAIN ARGUMENTS

In order to ascertain what the period of validity is under the Act, one would need to refer to the provisions of the United Kingdom Registered Designs Act of 1949 (“the UK Act”).

 

 

Position Before 1.8.1989: Up to 15 Years

Prior to the amendment effected by the Copyright, Designs and Patents Act 1988 of United Kingdom (“CDPA”), the period of validity of UK Registered Designs was 5 years from the date of registration, and this period could be extended for two further periods of 5 years each, thus, giving the registered proprietor a maximum period of protection of 15 years.

 

 

Position After 1.8.1989 (amendment under CDPA): Up to 25 years

The amendment under the CDPA effectively increases the maximum period of validity of UK Registered Designs from the existing 15 years to 25 years with regards to designs applied for registration on or after 1.8.1989. In brief, the proprietors of registered designs who enjoyed rights in Malaysia under the UK Act had a corresponding effect to their designs in Malaysia in the following manner:-

 

(a) in respect of designs applied for registration before 1.8.1989, the maximum period of validity of the registered designs is 15 years; and

(b) in respect of designs applied for registration on or after 1.8.1989, the maximum period of validity of the registered designs is 25 years.

 

 

The Position under the Malaysian Act: 15 or 25 years?

The Plaintiffs’ main point of contention was that the 15-year protection prescribed under sec. 25 of the Act does not affect nor supersede the 25-year protection granted to the UK Registered Designs under the repealed laws. Sec. 49(2)(c) expressly stated that “designs protected under the Repealed Laws shall continue in force and have the like effect as if it had been effected under the The Act.”


Sec. 50(2) of the Act also explicitly recognises the maximum period of validity accorded to certificates of registration granted under the UK Act. This is further reinforced by reading Item 4 of the ID Form 2 together with note (c) in the Regulations.

 

Taking into consideration sec. 30 of the Interpretation Acts 1948 and 1967, it was further submitted that that the general purpose behind the enactment of the Act and the Regulations was for the preservation and improvement of the rights of the owners of industrial designs. Thus, the Act and Regulations were not intended to take away the rights granted under the Repealed Laws but to preserve those rights. Reading sec. 50(2) of the Act together with sec. 30(1) of the Interpretation Acts, it would appear that the entitlement of the maximum period of registration of 25 years under the UK Act should not be curtailed by the Act and Regulations.

 

 

THE DECISION

The Honourable Judge who agreed with the Plaintiffs on all counts, granted an order in the terms applied for by the Plaintiffs. The grounds of judgment are not available at the time of writing.

 

 

IMPACT OF THE CASE

The effect of the outcome of the proceedings would be that proprietors would be entitled to fourth and fifth periods of protection, provided that the corresponding extensions have been obtained in the United Kingdom.

 

 

THE URGENCY TO PROTECT A DESIGN

The Regulations, as they currently appear, do not provide for the fees applicable for the fourth and fifth terms respectively. However, the Registrar’s office has indicated that amendments would likely be made to the Regulations to provide for the payment of fees for the fourth and fifth terms of renewal soon.

 

As it stands, the designs which form the subject matter of these proceedings would be exempted from the payment of fees for the fourth period of renewal. It should be noted, however, that fees may be payable for the fifth period if and when the Regulations are amended to provide for the same.

 

 

The Urgency: Why it was Important to Apply for Extension of the 4th Period of Validity

In respect of UK Registered Designs applied for registration before 1.8.1989, their maximum period of validity of 15 years would have expired at the latest on 31.7.2004 in the United Kingdom. In accordance with sec. 50(2) of the Act, the corresponding period of protection in Malaysia would also have expired. The position is, therefore, clear in respect of this group of UK Registered Designs.

 

Difficulties, however, arose with regards to the UK Registered Designs applied for registration after 1.8.1989. Under the UK Act, the first of these designs fell due for renewal in the United Kingdom for a 4th period of validity on or shortly after 1.8.2004. The majority of these designs also fell due for extension in Malaysia for the first time under the Industrial Designs Act 1996 regime.

 

The Registrar of Industrial Designs took the view that there were no provisions in the Act that provided for the extension of the period of registration for the fourth and fifth periods. Accordingly, the Registrar was inclined to reject applications for extension pertaining to UK Registered Designs that fell due for renewal on or after 1.8.2004.

 

 

KUEK PEI YEE ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 
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