The aesthetic or ornamental features of a product can help differentiate one product from another, especially when both products serve a similar function and purpose. In realizing the commercial advantage that the aesthetic appearance of the product design can give over their competitors, an increasing number of businesses are making use of the industrial design registration system to protect the design features of their products.

Design protection can run parallel with patent protection for the same product whereby the patent will protect the functionality of the product and the industrial design will protect the product’s aesthetic appearance.

In Malaysia, protection for industrial design is governed under the Industrial Design Act 1996 (IDA 1996) and Industrial Designs Regulations 1999 (IDR 1999). A design is registrable if the design has an aesthetic appearance which is new and which can be applied to the product by any industrial process. This includes features of shape, configuration, pattern or ornament that when applied to the finished product appeals to the eye.

Novelty

An essential criteria for design registration is the requirement that the design must satisfy the criteria of novelty. Until recently, only local novelty needed to be satisfied. However, upon the enactment of the Industrial Designs (Amendment) Act 2013 (IDAA 2013) which recently came into force on July 1, 2013, the standard of novelty has changed to worldwide novelty. Hence, a design shall not be considered as “new” if it has, before the priority date or the application date, been disclosed to the public anywhere in Malaysia or elsewhere. With the widening of the novelty standard, design owners should pay particular attention to avoid disclosure of their designs both within and outside Malaysia prior to filing the design application.

There is, nevertheless, a grace period of six months which is provided under the IDA 1996 for designs which have been disclosed in an officially recognized exhibition or when the design has been disclosed by a person other than the applicant as a result of an unlawful act committed by that person.

Extension Period

Another significant change with the coming into force of the IDAA 2013 is the extension of the period of registration from the current 15 years to 25 years, subject to the payment of extension fees before the expiration of each 5-year term. If a design application is filed claiming priority from an earlier application, the priority date is deemed to be the registration date of the design and for the purposes of determining the extension period, the expiry date is calculated from the priority date.

It is important to note that the extension period to 25 years is also applicable to industrial designs registered under the IDA 1996 which were registered prior to the coming into force of the Amendment Act on July 1, 2013.

Industrial Design as Personal Property

The recent amendments have also introduced provisions which recognizes industrial designs as a personal property which may be assigned, transmitted or dealt with in the same manner as other personal or movable property. A registered design may also be the subject of a security interest in the same way as other personal or movable property. Any rights in the registered design may thus be enforced in like manner as any other personal or movable property.

The title or interest in an industrial design by way of an assignment or transmission or by operation of law or by a security interest transaction should be recorded in the Register in order to have effect against third parties.

Benefits

It is without doubt that a registered design can be a valuable commercial asset. Adding design features to a product can instantly make a product attractive to consumers. Not only do registered design rights provide the owner with the right of ownership and the right to prevent others from using the design without permission, they also provide the owner with the benefit of exploiting the design. Licensing design rights for commercial returns and selling a registered design, it being a personal property, are some of the ways to reap the benefits of a registered design right.

Shearn Delamore & Co

7/F., Wisma Hamzah-Kwong Hing

No 1 Leboh Ampang

50100 Kuala Lumpur, Malaysia

T: +603 2027 2727

F: +603 2078 5625, +603 2078 2376

E: jyeshta@shearndelamore.com

W: www.shearndelamore.com