The Malaysian Industrial Designs Act 1996 (hereinafter referred to as “the Act”) has recently been amended to incorporate several changes to improve the protection of Industrial Designs in Malaysia.
There have been three significant changes made to the Act:
- Registrability of an Industrial Design in Malaysia
An Industrial Design may be registered only if it is a new design.
Prior to the amendment, an Industrial Design may still be considered a new design even if it has been disclosed outside Malaysia. As long as the Industrial Design has not been disclosed in Malaysia, it will be considered a novel design.
With the latest amendment, an Industrial Design will no longer be registrable if it has been disclosed in or outside Malaysia.
- Duration of protection of an Industrial Design in Malaysia
Prior to the amendment, an Industrial Design may only be protected up to a maximum of 15 years in Malaysia.
The latest amendment now allows for a longer term protection for an Industrial Design, up to a maximum of 25 years in Malaysia.
- Remedies for infringement
Damages and/or other legal remedies may be granted to a proprietor of a registered Industrial Design where infringement of his rights has occurred.
Prior to the amendment, the Court had the discretion to award any relief the Court deemed fit to the aggrieved owner of a registered Industrial Design.
The latest amendment has now made it very strict for subsequent owners to obtain relief in infringement matters relating to Industrial Design.
It has been provided that the Court shall not grant relief to subsequent owners who obtain a registered Industrial Design via any action (i.e. assignment, transmission, security interest, operation of law, etc). The exception to this rule is as follows:
- An application to record the subsequent owner’s interest is made within a maximum of 6 months from the effective date of the action; OR
- The Court is satisfied that it was not possible to have the recordal effected before the end of the 6 months period and an application to have the recordal effected was done as soon as it was practicable thereafter.
Other notable amendments:
- Industrial Designs which were accepted for publication were previously published in the Malaysian Industrial Design gazettes. These Industrial Design “gazettes” are now known as the “Intellectual Property Official Journal”.
- A heading in Part V of the Act, as well as the relevant sections under this heading, have been reworded for better clarity. Previously, the sections under this heading defined the “rights of an owner of a registered Industrial Design as a personal property”. The amendment has now clarified that “a registered Industrial Design is a personal property”.
As it is only a matter of time before these new changes are enforced, we welcome your enquiries and look forward to assisting you in addressing any burning questions you may have regarding these latest amendments and updates to Industrial Design protection in Malaysia.
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