Asia IP

The Malaysian Industrial Designs (Amendments) Act 2013 (the amended act) took effect on July 1, 2013. The salient features of the amended act include changes to the novelty requirement, protection period of a registered design, the rights of owner, recordals, and costs and other remedies for infringement. A more detailed discussion follows below.

While the Malaysia Designs Act of 1996 (the old law) will still govern pending design applications, the amended act automatically applies to all design applications filed from July 1, 2013, onwards. All registered designs will also be governed by the amended act regardless of application date. An illustration of the applicable dates is in Figure 1.

The salient features of the amended act are:

Novelty

The novelty requirement has been expanded to worldwide novelty, wherein a design is considered to be new only if it has not been made available or disclosed to the public, in any manner whatsoever in Malaysia or elsewhere in the world, prior to filing in Malaysia. Prior disclosure of an industrial design anywhere in the world before the priority date of the application claiming the design, is prejudicial to the filing of the application in Malaysia.

All applications pending when the amended act took effect will continue to be subject to local novelty and restricted to disclosures in Malaysia only. Despite the expansion of the novelty requirement in the amended act, the exception to prejudicial disclosures under the old law remains. Therefore, public disclosure of the design in Malaysia six months preceding the filing date of a design application is not prejudicial to the novelty of the design, provided the disclosure appeared in an official or officially recognized exhibition or the disclosure was by a person other than the applicant or their predecessor in title as a result of an unlawful act committed by a third party.

Protection Period

The amended act provides for a 25-year term protection for all registered industrial designs with an initial protection period of five years, extendable for a further four consecutive terms of five years each upon payment of renewal fees. In comparison, the old law conferred a 15-year term. This change applies retrospectively to all registered designs as the old law came into force on September 1, 1999, and the first design applications were filed in 1999 and will only expire in 2014.

Example:

Date of Registration: February 7, 2002

Current term of protection:

(Feb. 7, 2002) + 5 years = Feb. 7, 2007.

1st term of protection:

(Feb. 7, 2007) + 5 years = Feb. 7, 2012.

2nd term of protection:

(Feb. 7, 2012) + 5 years = Feb. 7, 2017.

3rd term of protection:

(Feb. 7, 2017) + 5 years = Feb. 7, 2022.

4th term of protection:

(Feb. 7, 2022) + 5 years = Feb. 7, 2027.

Rights of Owner

A registered design is now considered to be personal property and may be the subject of a security interest and is capable of assignment, transmission or being dealt with by operation of law in the same way as other personal or moveable property. A third party can check whether a design has been sold or charged to a bank through the records of the Register.

Recordals

A recordal of assignment, transmission, operation of law or security interest transaction in respect of a registered design shall have no effect against third parties unless recorded in the Register of the Malaysian Design Registry.

Infringement

Court will refuse to award costs to the assignee or transferee of a design registration unless such transfer is recorded with the Malaysian Design Registry within six months from the transaction date. A longer period may be accepted provided the Court is satisfied that it was not practicable to record the transfer within six months.

Intellectual Property Official Journal

The Official Journal replaces the publication of designs in the Government Gazette. The Official Journal will publish all matters which require publication under the Amended Act or any regulations under the Amended Act.

It is expected that the Amended Act will significantly increase interest in design protection in Malaysia. The expansion of worldwide novelty will also enhance creativity within the local industry as designers are now required to look at designs from an international perspective which will further boost interest in the protection of designs in Malaysia.

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About the Author

Patrick Mirandah is the CEO of patrick mirandah co. in Malaysia, Singapore, Vietnam, Thailand, Indonesia and the Philippines. He is a registered patent agent in both Singapore and Malaysia. He handles infringement and anti-counterfeiting cases; his work also includes negotiation of licensing and franchise agreements and advertising and media work.