An industrial design comprises features of shape, configuration, pattern or ornament applied to an article by any industrial process or means which in the finished article appeal to the eye.
Take note that industrial design consisting of any of the following are not registrable:-
a. A method or principle of construction
b. The designs of articles depend upon the appearance of another article which forms an integral part of the article
c. The design differs only in immaterial details or features
d. The features of the article are dictated solely by function
Once you have registered your industrial design, you have the exclusive rights in the commercial exploitation of your industrial design, including making, selling, hiring, importing for sell or hire for purposes of any trade or business concerning the registered industrial design, yet preventing any body else from using and making money from it. The owner also holds the right to license the registered design to third parties for commercial purposes, preventing fraudulent activity concerning the protected industrial design from others.
a. information identifying the applicant (s) and the author(s) (Full name, address and nationality);
b. the Appointment of Agent Form (Form ID 10) signed by the authorised person of the applicant;
c. information on how the applicant has derived the right to the design from the author if the applicant is not the author (generally by way of assignment, employment or other agreement);
d. a set of representations of the design (in .jpeg format) with a designation of views to be published;
e. the name of the article;
f. the class and sub-class of the article to which the design is applied (based on the Locarno Classification);
g. a statement of novelty in respect of the industrial design to which the application relates;
h. information regarding any priority claim including Application No., filing date and country(If priority is to be claimed from a priority application); and
i. the priority document, and a certified English translation of the priority document if it is not in English (If priority is to be claimed from a priority application).
The application for registration of industrial design has to be filed within six (6) months from the filing date of any of the Paris Convention member countries in order to claim priority of the said country.
Malaysia is a member of the Locarno Agreement and thus utilises the Locarno Classification, an international classification used to register industrial designs.
You should keep your industrial design to yourself until your industrial design application has been filed under the Industrial Designs Act 1996. Industrial designs in Malaysia must have worldwide novelty in order to be registrable, simply means that your industrial design must not be publicly disclosed in any form prior to filing application. However, the Industrial Designs Act 1996 provides a novelty grace period where within a period of six (6) months before the filing date, such that a public disclosure may be disregarded if:-
a) it appeared in an official or officially recognised exhibition; or
b) it has been disclosed by a person other than the applicant or his predecessor as a result of an unlawful act committed by that other person.
The estimated time frame from the filing of anapplication to the issuance of registration certificate for a smoothapplication is approximately nine (9) months to twelve (12) months.
Your registered industrial design is given an initial protection period of five (5)years from the date of filing and is renewable every five (5) years with prescribed extension fees. The maximum protection period is twenty-five (25) years.
Unfortunately, no. Registration of industrial design is territorial in nature. You will need to apply to each desired country in which you want to pursue industrial design protection.
You as the owner of a registered industrial design may commence infringement proceeding against the infringer and the Court may award damages or an account of profits and may grant an injunction to prevent further infringement and any other legal remedies as the Court deems fit.
We can assist you in all aspects of industrial design protection and enforcement. Feel free to contact a member of our team or contact us at general@chphoonlaw.com.my should you have any questions.