Recent Amendments to the Industrial Designs Act 1996 & the Industrial Designs Regulations 1999
The Industrial Designs Act 1996 (the “Act”) and the Industrial Designs Regulations 1999 (the “Regulations”) have recently been amended by the Industrial Designs (Amendment) Act 2013 and the Industrial Designs (Amendment) Regulations 2013 which came into force on 1 July 2013.
The gist of the amendments is appended below for your information:
1. Novelty Requirement
Prior to the amendments, an industrial design was considered new and registrable if the said design or another design differing only on immaterial details or in common features used in trade was not disclosed to the public anywhere in Malaysia. However, under the amended Act, an industrial design shall not be considered to be new if the said design or another design differing only on immaterial details or in common features used in trade was disclosed to the public anywhere around the world. In short, a registrable industrial design shall possess international novelty.
2. Extension of the period of registration of an Industrial Design
The total period of registration of a registered industrial design is extended from 15 years from the date of application/priority date to 25 years. The pre-amended Act only allowed extension of the period of registration for two consecutive terms of five years. Currently, under the amended Act, except for designs registered under the United Kingdom Designs (Protection) Act 1949, the United Kingdom Designs (Protection) Ordinance of Sabah and the Designs (United Kingdom) Ordinance of Sarawak which are repealed, a registered industrial design including design which has been registered before 1 July 2013, shall be renewable in four consecutive terms of five years each from the date of application/priority date.
Under the amended Regulations, a renewal application can be made at any time before the expiration of the current term. However, the official fees for renewing/extending the 4th and 5th terms of the registration period are not provided under the amendments.
3. Registrable Transactions including transmission, assignment and security interest transaction
The amended Act provides that a registered industrial design is a personal or movable property capable of assignment, transmission or being dealt with by operation of law and it introduces the recordal of security interest transaction of a registered industrial design.
It is also expressly provided under the amended Act that any assignment of a registered industrial design or an application for the registration of an industrial design must be in writing and signed by or on behalf of the assignor or assignee or their personal representative. Otherwise, the assignment shall not be effective.
A person who has become entitled to a registered industrial design and/or an industrial design application by way of an assignment or transmission and/or by operation of law or by a security interest transaction in respect of a registered industrial design, shall apply to the Registry to record his relevant title/interest in the Register within 6 months from his entitlement. Otherwise, the Court in an industrial design infringement action shall refuse to award costs to the said person unless the Court is satisfied that the application to record his title/interest is impracticable within the 6 months period and the application to record his title/interest was made as soon as practicable.
It remains that failure to record the assignment, transmission, operation of law or security interest transaction in the Register shall render the transaction(s) ineffective against any third party.
In processing an application for recording an assignment, transmission, operation of law or security interest transaction, the Registrar may require submission of other document, instrument or information in support of the application within a specific time frame, which may be extendible by filing a prescribed form at a fee. Where the relevant transaction is effected by an instrument chargeable with stamp duty, unless the Registrar is satisfied that the duty has been duly paid, he may refuse to enter the transaction in the Register.
4. Introduction of the Intellectual Property Official Journal
Intellectual Property Office Journal (“Official Journal”) is introduced under the amended Act to replace the Gazette, for publishing all matters relating to industrial designs which is required to be published under the Act and all information or matters relating to industrial designs as the Registrar considers important or useful, including the registration of an industrial design, notice of intention to restore the registration of an industrial design, etc.
The Official Journal is made available to the public on payment of a prescribed fee. It is expressly provided under the amended Act that any publication in the Official Journal shall constitute sufficient notice of any matters required to be published under the Act and shall be admitted as prima facie evidence of the facts stated therein for any legal proceedings.
5. Mode of Commencement of Legal Proceedings
It is provided under the amended Regulations that an application to the Court to rectify the Register, revoke registration of a registered industrial design and for grant of a compulsory licence may be made by originating summons instead of a notice of motion.
Saving and Transitional Provision of the Amended Act/Regulations
The amendments introduced under the Industrial Designs (Amendment) Act 2013 and the Industrial Designs (Amendment) Regulations 2013 are applicable to:
- Industrial design applications pending as at 1 July 2013; and
- Industrial design applications filed on and after 1 July 2013.
The additional 2 extension terms of 5 years each provided under the amended Act is nevertheless applicable to design which has been registered before 1 July 2013.proceedings.
The amended Act/Regulations will not affect any legal proceedings which are pending before 1 July 2013. Any matter or information required to be published in the Gazette before 1 July 2013 shall be published in the Gazette accordingly. Any matter published in the Gazette shall however have the same effect as if it is published in the Official Journal.