Industrial design rules brought up to date
Worldwide novelty rather than local novelty is now required for the registration of new designs in Malaysia.
The Industrial Designs (Amendment) Act 2013 (amending act) which came into force on July 1, 2013 now provides that the consideration of public disclosure is no longer limited to Malaysia. As such, an applicant would need to prove worldwide novelty in order to successfully apply for registration of an industrial design.
It should be noted however, that an industrial design shall not be deemed as disclosed to the public if within the six months preceding the filing date of an application for registration, it appears in an official or officially recognised exhibition or has been disclosed by a person other than the applicant or his predecessor in title as a result of an unlawful act committed by that person or another person.
The period of registration has been extended from 15 years to 25 years, hence reverting to the position under the UK’s Registered Designs Act 1949 which was adopted in Malaysia prior to the enactment of the Malaysian Industrial Designs Act 1996.
Any industrial design registered before July 1, 2013 can now be extended up to 25 years and pending registrations of an industrial design prior to July 1, 2013 will also be afforded the extended 25-year term under the amending act.
"The intellectual property official journal will replace the government gazette to publish all matters recquired under the act, or regulations made under the act."
Another relevant amendment is that made to Part V of the act. The amended Part V now clarifies certain rights of an owner and places emphasis on the eligibility of registered designs to be used as collateral.
The amending act is the first piece of legislation which provides for this and is consistent with Malaysia's recent plans to encourage the monetisation of IP, and to become the first country in South East Asia to carry out IP valuation for the purpose of use as collateral.
The amending act which assists in providing the framework for this requires assignments to be made in writing including those made in relation to assignments by way of security, clarifies that a registered design may be the subject of a security interest in the same way as other personal or moveable property and requires that such assignments be recorded with the Registrar, including where a person becomes entitled to a registered industrial design by way of an assignment or transmission or by operation of law or by a security interest transaction.
No assignment, transmission, operation of law or security interest transaction in respect of a registered industrial design shall have effect against third parties unless recorded in the register. In addition, a court has the right to refuse to award costs to the rightful owner in respect of an infringement if there is any failure of such registration within the prescribed time of six months from the date of the relevant transaction, unless there is good reason that the application wasn’t made earlier.
The Intellectual Property Official Journal will replace the Government Gazette to publish all matters required under the act or regulations made under the act. The journal will also contain such other information or matters relating to industrial designs which the Registrar considers as generally useful or important.
It is hoped that the amending act will assist in encouraging and promoting the production of industrial designs among Malaysians and allow owners to monetise their creations.
