Amendments to Industrial Designs Act bring regime change
June 24 2013
Changes to industrial design regime
Costs in infringement proceedings
Intellectual Property Official Journal
The Industrial Designs Act 1996 will shortly be amended by the Industrial Designs (Amendment) Act 2013, which will come into force on July 1 2013. The act introduces a number of important amendments.
Under the existing act, in order for an industrial design to be registrable it must be proven to be new in Malaysia. An industrial design is considered not to be new if, before the priority date of application, it or an industrial design differing from it only in immaterial detail (or in features commonly used in the relevant trade) was disclosed to the public anywhere in Malaysia.
Under the amended act, the requirement for newness or novelty will be expanded and an industrial design will also be considered not to be new if, before the priority date of application, the aforementioned public disclosure occurs outside Malaysia.
At present, a registered industrial design is valid for a period of five years and can be extended only twice for consecutive periods of five years each. However, once the amended act comes into force, an industrial design that is either pending registration or has already been registered may be extended for a total of four consecutive periods of five years each. In other words, the registration period of an industrial design will be extended from 15 to 25 years.
The amended act will also introduce a number of important changes to the industrial designs regime:
- Apart from being capable of assignment, transmission or being dealt with by operation of law in the same way as other personal or moveable property (subject to the provisions of the act), a registered industrial design may now be the subject of a security interest in the same way as other personal or moveable property.
- Any transmission of a registered industrial design, or an application for the registration thereof, is now subject to any rights vested in any other person for which notice is entered in the register or for which notice is given to the registrar.
- An express requirement has been introduced through which an assignment of a registered industrial design, or an application (in writing) for the registration of such a design, must be signed by or on behalf of the assignor and the assignee or, as the case may be, a personal representative thereof.
- The owner of a registered industrial design will now be given the express right to grant a licence to any person to use that registered industrial design.
- Any rights in respect of a registered industrial design may now be enforced in a like manner, as is the case for any other personal or movable property.
Under the amended act, a person who becomes entitled to a registered industrial design or an application for the registration of an industrial design by way of assignment, transmission, operation of law or a security interest transaction, as the case may be, must apply to the registrar of industrial designs to record his or her title or interest in the register.
Furthermore, assignment, transmission, operation of law or security interest transactions in respect of a registered industrial design will have no effect against third parties unless recorded in the register.
The amended act will introduce a new provision which provides that in industrial design infringement proceedings, the court shall refuse to award costs to the owner of a registered industrial design that becomes entitled to the registered industrial design by way of assignment or transmission, by operation of law or by a security interest transaction in respect of an infringement unless:
- an application to record its title or interest is made before the end of the six-month period beginning from the date of the relevant transaction; or
- the court is satisfied that it was not practical for the application to be made before the end of that period and that an application was made as soon as possible thereafter.
With the introduction of this provision, it is imperative that a person who becomes entitled to a registered industrial design by way of assignment, transmission, operation of law or a security interest transaction takes prompt action to register the transaction.
At present, the registrar publishes various pieces of important information in the government’s Official Gazette, such as notices of registration of an industrial design, notices of lapse of registration of an industrial design and notices of intention to restore a lapsed registration.
Once the amended act comes into force, notification will instead take place in the Intellectual Property Official Journal, which will be available to the public on payment of the prescribed fee. In addition:
- publication in the Official Journal will constitute sufficient notice of any matter required to be published under the act or any regulations made thereunder;
- a copy of the Official Journal will be admissible in legal proceedings as evidence without further proof being given that the copy was so published; and
- a copy of the Official Journal will be considered prima facie evidence of the facts stated therein.