An industrial design consists of features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which, in the finished article appeal to and are judged by the eye. An article means any article of manufacture or handicraft, and includes any part of an article that is made and sold separately.
Protection in Malaysia of the designs of industrially produced articles is governed by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which came into force on 1 September 1999. Under this registration regime, the owner of an industrial design may, upon filing and successfully completing an application, register the design in respect of a specified article with the Registrar of Industrial Designs. Examples of articles the designs of which are registrable include furniture, toys, mobile telephones, electronic gadgets and appliances, household utensils, bottles, cases, carpets, wallpaper and textiles.
The definition of "industrial design" in the Act specifically excludes a method or principle of construction, which recognizes that the protection conferred, is confined to the aesthetic appearance rather than any technical aspects that are more suitable for patent protection. Also excluded from the legal definition of an industrial design are features of shape or configuration of an article which are:-
- dictated solely by the function which the article has to perform, or
- dependent upon the appearance of another article of which the article is intended by the designer to form an integral part. These exclusions are often referred to as the "must fit" and "must match" exclusions, respectively. They have been the subject of judicial comment in the United Kingdom. The reason for these exclusions is to allow for inter-operable products to be marketed and to prevent monopolies from being created over articles such as automobile spare parts. It should be noted that while such excluded features shall not be taken into account when assessing the registrability of a design, the existence of other novel features that are not so excluded may qualify the design for registration.
Qualification for protection
An industrial design that meets the above definition qualifies for protection provided:
- it is not contrary to public order or morality; and
- it is "new".
For the purposes of registration, a design is not considered to be "new" if before the priority date of the application, it or a similar industrial design was disclosed to the public anywhere in Malaysia (so-called "local novelty"), or was the subject-matter of another registration in Malaysia having an earlier priority date and made by a different applicant.
Although registration is for the design applied to a particular article that is specified in the application, novelty is assessed based on the design per se and so can be destroyed by the prior application of the same design to a different article.
To cater for the fact that designers and industrialists often exhibit new designs at trade fairs and exhibitions prior to industrial exploitation or applying for registration of the designs, the Act specifically provides that an industrial design is not deemed to have been disclosed to the public solely by reason of the fact that within six months before the filing of an application for its registration, the design appeared in an official or officially recognized exhibition.
A design is also not considered to have been disclosed to the public solely by reason of the fact that within six months prior to the filing date of an application for its registration, it was disclosed by a person other than the applicant or his predecessor in title, as a result of an "unlawful act" committed by that other person or another person.
Application for registration
An application for the registration of an industrial design may be made by the owner of an industrial design to the Intellectual Property Corporation of Malaysia (MyIPO).