AMENDMENTS TO THE INDUSTRIAL DESIGNS ACT 1996

Hemalatha P Ramulu explains the key amendments to Malaysia’s laws on industrial designs

The Industrial Designs (Amendment) Act 2013 (“Amendment Act”) was gazetted on 22 January 2013 and will come into operation on 1 July 2013. Some of the amendments that will be made to the Industrial Designs Act 1996 (“IDA”) under the Amendment Act will have a significant effect on the protection and exploitation of industrial designs in Malaysia. The changes essentially cover four aspects of the IDA which are discussed below. 

 

THE REQUIREMENT OF NOVELTY

 

One of the requirements for an industrial design to be registrable in Malaysia is that it should be new. As it currently stands, Section 12(2)(a) of the IDA dictates that if before the priority date of the design that is being applied for registration, that design or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade has been disclosed to the public anywhere in Malaysia, then the said design would not be considered new and would consequently, be ineligible for registration.

 However, the amendments to Section 12(2)(a) set a higher threshold in that they require the applicant to show that before the priority date of the design that is being applied for registration, that design or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade has not been disclosed to the public anywhere. In short, the novelty of an industrial design will be assessed globally and any publication by prior use or prior user anywhere in the world will defeat the novelty claimed by the applicant in respect of that industrial design.

This amendment will have a significant consequence both in terms of registration as well as enforcement. However, an assessment of novelty on a global basis will not apply retrospectively to cases where the design has already been registered and legal proceedings are pending. The saving provisions in Section 12 of the Amendment Act state clearly that any legal proceedings which are pending before the date of coming into operation of the amendments shall be continued as if the amendments had not been enacted.

However, it is crucial to note that Section 12 of the Amendment Act states that any application for the registration of an industrial design pending on the date of coming into force of the amendments will be dealt with under the IDA as amended by the Amendment Act. This being the case, it would be necessary to ensure henceforth that designs for which registration is sought, in particular those which are non-Convention based, are novel on a global basis.

 


THE PERIOD OF REGISTRATION

 

The existing Section 25 of the IDA states that the registration of an industrial design shall be deemed to have come into force on the filing date of the industrial design application and shall subsist for an initial 5 years and thereafter, this period may be extended for two further terms of 5 years each. The amendments to this provision permit an applicant to extend the period of registration up to a maximum of four terms which in other words, will enable a registered industrial design to be in force for 25 years.

Section 12(4) of the Amendment Act provides that, save for the designs registered under Section 49 of the IDA, an industrial design that has been registered under the IDA will be entitled to protection for the extended period of 25 years, if the owner of that design so wishes.

 

PART V OF THE IDA


The existing Sections 29 and 30 of Part V of the IDA will be replaced in toto by new provisions.

The existing Section 29 inter alia states that the rights in relation to a registered industrial design are personal property and the laws applicable to the ownership and devolution of personal property apply to such design. The section also requires an assignment of such property to be in writing. 

The above-referred principles are retained in the new Section 29, but the new provision elaborates on these principles in several respects. The new provision clarifies that a security interest can be created over a registered industrial design and expressly requires an assignment of a registered industrial design, or of an application for registration of an industrial design, to be signed by, or on behalf of, the assignor and the assignee. It also permits the owner of a registered industrial design to grant a licence to any other person to use his design.

The new Section 30 maintains the requirement under the existing Section 30 that a transfer of rights in relation to a registered industrial design, whether by way of an assignment, transmission or by operation of law, must be recorded in the Register of Industrial Designs to be effective against third parties. The new provision extends the foregoing requirement to a security interest transaction in relation to a registered industrial design.

One of the reasons for the amendments to Part V of the IDA is to implement one of the measures announced by the Prime Minister of Malaysia at the Budget 2013, that is, to enable small and medium enterprises to use their intellectual property rights as collateral to obtain financing.

 

NEW SECTION 46A

The new Section 46A requires the Registrar of Industrial Designs to publish an Intellectual Property Official Journal (“IPOJ”) which contains all matters relating to industrial designs which are required to be published under the IDA. It further provides that a copy of the IPOJ shall be admitted in legal proceedings as evidence without further proof that the copy had been published and that the copy of the IPOJ shall be prima facie evidence of the facts stated therein. 

The saving provision in Section 12(5) of the Amendment Act further provides that upon the coming into operation of the Amendment Act, any matter that has already been published in the Gazette will be deemed to have been published in the IPOJ.  

The powers of the Minister to make regulations under Section 47 of the IDA have been extended to include the power to regulate the procedure for recording of the matters required under Section 30 and to prescribe any matters or information to be published in the IPOJ.

 


CONCLUSION

Owners of industrial designs who seek to register the same under the IDA will be concerned that the requirement of novelty in order for an industrial design to be registrable has been extended to a global basis.

The extension of the total period of protection for an industrial design to 25 years and the clarification that the rights in respect of a registered industrial design may be assigned by way of security and be licensed to other users will be welcomed by the stakeholders. Similarly, the clarification on the assignability of rights in relation to an application for registration of an industrial design will be welcomed.

 

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