5 things about Industrial Design Rights in Malaysia

    Intellectual Property

    The Industrial Design Act of 1996 grants an intellectual property right known as Industrial Design Rights (IDR). IDR refers to the creation of a shape and configuration, or a pattern and ornamentation, in two or three dimensions, with an aesthetic value, for use in the production of a product, industrial commodity, or handicraft.

    1. What designs are registrable and unregistrable?

    To be eligible for registration in Malaysia, a design must:

    • Fulfil the interpretation of an industrial design according to the Industrial Designs Act 1996, in particular, the definition of an “article” which means any article of manufacture or handicraft or part of such article if that part is made and sold separately;
    • Be new in Malaysia and anywhere else in the world; and
    • Not be contrary to public order or morality.

    Items that are not eligible for industrial design protection in Malaysia are:

    • A method or principle of construction;
    • Features of the article which are dictated solely by function;
    • Features of the article which are dependent on the configuration of another article that forms an integral part of the article; and
    • All or part of an integrated circuit which is protected under the Layout Designs of Integrated Circuits Act 2000.

    1. What are the novelty requirements for industrial design rights?

    Further to a qualified registration, the design must be new worldwide. A design cannot be considered new if the design or an industrial design differs from it only in immaterial details or in features commonly used in the relevant trade:

    • was disclosed publicly in Malaysia and worldwide.
    • was the subject matter of another application for registration of the industrial design.

    1. How long is a registered industrial design protected in Malaysia?

    The term of protection of a registered industrial design varies around the world and was recently extended from 15 to 25 years in Malaysia. A 6-month grace period is given to reinstating any lapsed industrial design registration subject to payment of a surcharge.

    If the failure to extend the registration is within one year of the date on which the notice of lapse was published in the government gazette due to an accident or error, the owner or his successor can apply to reinstate the registration. Restoration of lapsed registration is subject to opposition proceedings by any interested person.

    1. What rights does the owner of a registered industrial design have?

    A registered design owner has the exclusive right:

    • to make,
    • to import for sale or hire,
    • for use for the purposes of any trade or business,
    • to sell, hire or offer, or
    • to expose for sale or hire any article to which the registered design has been applied.

    1. What is classified as the infringement of industrial design rights?

    Subject to Section 30, infringement of registered industrial design comprises the action without license or consent of the owner or 

    • a fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;
    • imports into Malaysia for sale, or for use for the purposes of any trade or business, any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the license or consent of the owner; or
    • sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles described above.

    The examples of Industrial Design

    Here are a few examples of great industrial designs that seamlessly integrate aesthetics and inventive solutions :

    • Mini Cooper

    The Mini is a classic design that was produced due to the 1956 Suez Fuel Crisis which forced UK Government to ration fuel and demand for a small economical car with lower fuel consumption.

    • Coke Contour Bottle

    It was designed in 1915 and the Coca-Cola contour bottle is a masterpiece in industrial design that would be distinctive and instantly recognizable even in the dark.

    • Vespa Scooter

    Besides of its elegance, it also represents milestones in terms of industrial design and culture as it changed the lifestyles of billions of people post-war. Vespa Scooter’s design was influenced by pre-World War II Cushman scooters when it was used to act as field transport for paratroopers and marines during the war. After the turmoil of World War II, due to its universal appeal, it became a symbol of modernity, feminism, and change. This simple scooter is also easy to maintain, stylish, and cheap to run.

    • Hasselblad 500C Camera

    During WWII, Hasselblad was commissioned to build a copy of a hand-held aerial camera recovered from a German aircraft. The camera was not just a copy, but it had been made better. It became the anchor product for the Hasselblad company for the next four decades and was used by NASA during the Apollo missions to the moon.

    If you believe that your industrial design is unique and has commercial potential, it is worthy of investment to file for protection. To learn more about how to get an industrial design registration, our IP advisors always have their feet ready to provide comprehensive advice for you.

    This article is brought to you by Exy IP PTE. LTD.

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