An industrial design means features of shapes, configuration, pattern or ornament applied to an article by any industrial process or means which in the finished article appealed to and is judged by the eye. Articles which are commonly registered are containers, bottles, furniture, lamp shapes, vases, design packagings, etc.
What are the requirements for filing an industrial design?
To be registrable, an industrial design must be new and original in Malaysia or elsewhere, i.e. the design must not have been disclosed before, fulfil the design definition, and not contrary to public order or morality. Therefore, the validity of a Registered Design can be impugned:
if the design is not new and original;
if the design features are functional, or
if the article is one which, when people buy it, they are unconcerned about its aesthetic features.
What kinds of designs are unregistrable ?
An industrial design is not registrable if:
the aesthetic appearance of an article is not significant or the design features differs only in immaterial details
it is a method or principle of construction;
the designs are contrary to public order or morality;
the designs of the articles concern exclusively with how an article functions; and
the designs of articles that are integral parts of other articles and the features are dependent upon the appearance of other articles
Why should you register your industrial design?
The owner of a registered industrial design obtains exclusive rights to the design as well as the right to stop others from using the design without his permission. These rights will give him the liberty to exploit the designs in many ways, i.e. licensing the design to others for royalties, applying the design on articles he is producing for sale, or even sell the design for a sum of money.
How long does the protection last once an industrial design is registered ?
The initial phase of protection lasts for 5 years from the filing date. However, by paying extension fees, this can be extended for another 2 consecutive 5-year terms each.
What are the remedies for the infringement of an industrial design?
Sec. 35 of the IDA’96 states that on the registered industrial design owner proving infringement, the court may award damages or compel the infringer to account for profits, made delivery up of infringing articles and may grant an injunction to prevent further infringement.
Can I still protect my industrial design under the Copyright Act with the implementation of the Industrial Design Act 1996 and the Copyright (Amendment) Act 1996 in Malaysia?
No. According to the Copyright (Amendment) Act 1996, works which need to be registered under the Industrial Design Act 1996 are no longer to be protected by the former. Section 7(6) of the Copyright (Amendment) Act 1996 further provides that as soon as any article to which the design has been applied has been produced more than 50 times by an industrial process, the design will no longer be protected by the said Copyright Act.
Do I have any protection in Malaysia if I do not register my design with the Malaysian Intellectual Property Office (MyIPO)?
No, in order to be protected in Malaysia, you need to file your design for registration with MyIPO. Otherwise, no protection is available for your design, including common law protection.
Does an industrial design registration in Malaysia extend overseas?
No, industrial designs are also territorial in, nature; therefore registration in Malaysia only provides protection in Malaysia. A separate industrial design application needs to be filed in the country in which you intend to seek protection within 6 months from the earliest date when it was first filed in any of the Paris Convention member countries.
When should I apply to register an industrial design?
You should file your design for registration before disclosure to the public.
What are the rights conferred on the owner of the industrial design?
Registration of the industrial design gives the owner exclusive right to make or import for sale or hire; for use for the purpose of any trade or business; to sell or hire; or to offer or expose for sale or hire, any article to which the registered industrial design has been applied.
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