Reshaping Malaysian design law
That report concluded that although the system of design protection had functioned well, there was a need to modernise the law to bring it more into line with international standards.
It is now known that changes to all four main IP laws in Malaysia, covering trademarks, copyright, designs and patents, are on the horizon. The first sign of change on designs came with the recent release of a draft parliamentary bill for a new Designs Act 2010. The draft bill is a substantial work that proposes changes not only in the substantive law, but also in its administration.
The key changes concern the definition of a design, the standard for its registrability, the term of protection, and a clearer demarcation between the jurisdictions of the Malaysian IP Office (MyIPO) and the High Court. That the amendments require a whole new act, rather than merely changes to the existing one, demonstrates the scale of the reform. The term ‘industrial’ is deliberately removed from the title, in an attempt to highlight the new law’s relevance to more contemporary concepts of design.
A product shall be eligible for design protection covering its appearance as a whole or in part arising from the features of, in particular, the lines, contours, colours, shapes, textures or materials of the product or its ornamentation. There are exclusions for features of appearance that are solely dictated by the product’s technical function, or must be reproduced exactly for the product to work alongside another product.
“A product shall be eligible for design protection covering its appearance as a whole or in part arising from the features of, in particular, the lines, contours, colours, shapes, textures or materials of the product or its ornamentation.”
In order to be registrable, a design must be novel and have individual character. In considering individual character, the degree of freedom of the designer is to be taken into account. Under the Industrial Designs Act 1996, only local novelty is required. The draft bill specifies a worldwide novelty standard for the first time, though this is tempered by a wide-ranging 12-month grace period that excludes prior disclosure at an official exhibition, by the applicant or by another person as the result of an unauthorised act. The intention of the expanded grace period is to allow for market testing without prejudice to a later application for registration.
It is proposed to extend the term of protection from 15 years to a maximum of 25 years, consistent with the term available to UK-registered designs protected under the transitional provisions of the 1996 act as determined by the High Court in 2005.
Under the 1996 act, rectification of the register and revocation of a design registration are principally matters for the court. The Registrar has jurisdiction in limited circumstances.
According to the draft bill, an application for invalidation of a registration on the grounds of lack of registrability or non-entitlement would be made first to the Registrar, with its decision appealable to the court. This change is aimed at more efficient administration, with fewer burdens on the court and lower costs for third parties that need to challenge a design registration.
The substantive registrability requirements will be familiar to European practitioners as they largely adopt the wording of EU and harmonised European national laws on design protection. On the other hand, the substantive provisions on infringement in the draft bill remain the same. A finding of infringement still requires the infringer to have adopted the same design or an obvious or fraudulent imitation of it.
Many of the other changes in the draft bill appear to be little more than extensive rewrites of the current law that add unnecessary layers of complication without seeming to address any issues. Official statistics show a fall in the number of new design applications filed with MyIPO since a peak in 2007. The decline is doubtless primarily the result of belt-tightening by foreign applicants that are more likely to cut back on designs than patents in economic hard times.
Now, designers face a future broadening of the scope of protectable subject matter tied to a higher registrability bar. Whether the official objective of stimulating design registration can be achieved in this way will only be known years from now, once the shape of the final act has been decided by parliament and the new law fully tested by its users.
Dave A. Wyatt is executive director and head of the patents department at Henry Goh & Co Sdn Bhd. He can be contacted at: dave@henrygoh.com
