1. ) Chong Teck Choy v Bina-Safee Sdn Bhd (WA-22IP-34-06/2020)

CHONG TECK CHOY [NRIC NO.: 660810-10-6821]

MS-PRINT INDUSTRY SDN BHD [Company No.: 199501033662 (362864-H)] … PLAINTIFFS AND BINA-SAFEE SDN BHD [Company No.: LL17059] … DEFENDANT [in the main suit] AND BETWEEN BINA-SAFEE SDN BHD [Company No.: LL17059] … PLAINTIFF IN THE COUNTERCLAIM AND CHONG TECK CHOY [NRIC NO.: 660810-10-6821] … DEFENDANT IN THE COUNTERCLAIM (in the counter-claim) JUDGMENT INTRODUCTION [1] The First Plaintiff’s (“P1”) claim is based on the alleged infringement of P1’s Industrial Design (“ID”) by the Defendant. [2] The Second Plaintiff’s (“P2”) claim is based on the alleged passing off of P2’s business as a manufacturer of warning tapes. [3] The Defendant’s defences are that:-

P1 is not the owner of P1’s ID;

the ID itself is not capable of registration; and

the ID is not new, as required under the Industrial Design Act 1996 (“IDA 1996”) [4] The Defendant’s defences in its Statement of Defence (“SOD”) are also the basis of its counter-claim for rectification of P1’s ID under section 24 of the IDA 1996. ISSUES BEFORE THIS COURT [5] The primary issue for determination is whether P1’s ID is capable of registration and whether P1’s ID is “new” as required by the provisions of the IDA 1996. [6] Only designs that fall within the narrow definition of “industrial design” provided in section 3(1) of the IDA 1996 are registrable under the Act. The Act defines an industrial design as follows: “Interpretation

(1) In this Act, unless the context otherwise requires— “industrial design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include—

a method or principle of construction; or

features of shape or configuration of an article which —

are dictated solely by the function which the article has to perform; or

(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.” [7] In the present case, P1 has claimed novelty to the article, with respect to the pattern and ornamentation. [8] In Anchorshol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd [2008] 10 CLJ 49, Ramli Ali J (as he then was) quoting Lord Morris of Borth-y-Gest in Amp Incorporated v Utilux Pty Ltd [1972] RPC 103 held: “The phrases ‘appeal to’ and ‘judged solely by the eye’ denote features which will or may influence choice or selection. The eye concerned will be the eye, not of the Court, but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question. This does not mean that the ‘appeal’ or the attraction must be to an aesthetic or artistic sense-though in some cases it may be. The features may be such that they gain the favour of or appeal to some while meeting the disfavour of others. Beyond being merely visible the feature must have some individual characteristic. It must be calculated to attract the attention of the beholder. It is clear from the language of the above paragraph that Lord Morris of Borth-y-Gest meant that the ‘person who may be deciding whether or not to acquire the finished article’ or the ‘attention of the beholder’ is the purchaser of the design and not a disinterested person in the street. The fact that the product will ultimately be hidden from the public’s view when the purchaser uses the product is not the determining factor when the court is assessing the ‘appeal to the eye’.” [9] The Defendant submits that it is P1’s burden to establish the eye-appeal element by adducing evidence from real customers for the “finished article” in question. In the present case, the article is the “detectable warning tape”, of which P1 is the holder of registration RID0342 since 20.03.2014. [10] P1 claims the novelty in RID0342 is in its pattern and ornamentation with regard to:

3 x 3 mm squares on the tape’s surface; and

(ii) that there is no gap between the squares on the tape. P1 contends that the alleged infringing material sold by the Defendant (see Exhibit P2) infringes RID0342 in that it is identical to it. Exhibit P1 is a sample of P1’s tape using RID0342. FINDING OF EYE APPEAL [11] I am persuaded by the decision of the Court of Appeal in F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products Inc [2013] 1 LNS 380 where the court held: “The burden is still on the Respondent as the Plaintiff at the trial court to establish the ‘eye-appeal’ element by adducing evidence from real customers of the finished articles in question. Both PW3 and PW5 to our mind are not real customers for that purpose. Therefore, we are of the view that the ‘eye-appeal’ element in the features of the finished article which is the main consideration under the definition is not established. On this ground alone, we find that the Respondent’s design does not fall under the definition of ‘industrial design’ under section 3(1) of the IDA 1996 and therefore not registrable under section 12 of the same Act. As clearly said by Lord Oliver of Aylmerton in Interlego AG, ‘it is an essential requirement of a design’ as defined by the Act that it has eye-appeal. If it does not have that then it fails to qualify without reference to the exclusion at all.” [12] This Court finds that P1 has failed to adduce any evidence of real customers of the warning tape in exhibit P1. P1 has not called any of its customers, like users, or any other customer to testify on the issue of eye appeal. The second and third witness of the Plaintiff (respectively, “PW2” and “PW3”) are not customers of P1. On this ground alone, I find section 3 of the IDA 1996 read together with section 12 has not been satisfied. Thus, P1’s registration in RID0342 should be subject to rectification under section 24 of the IDA

[13] The other pivotal issue is whether P1’s ID is new under section 12 of the IDA 1996. Section 12 of the IDA reads as follows:

“Registrable industrial design

Subject to this Act, an industrial design shall not be registered unless it is new.

An industrial design for which an application for registration is made shall not be considered new if, before the priority date of that application, it or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade—

was disclosed to the public anywhere in Malaysia or elsewhere; or

was the subject matter of another application for registration of an industrial design filed in Malaysia but having an earlier priority date made by a different applicant in so far as that subject matter was included in a registration granted on the basis of that other application.” Meanwhile, section 17 of the IDA 1996 reads as follows:

“Priority date and right of priority under treaty or convention

Subject to this section, the priority date of an application for registration of an industrial design is the filing date of the application.” [14] Thus, P1’s ID will not be considered new if before its filing date (20.03.2014) another almost similar ID differing only in immaterial details was disclosed to the public in Malaysia or elsewhere. [15] I need only to refer to two (2) pieces of evidence to show prior disclosure of the registered design in the tapes, that were publicly available:-

Exhibit D17, i.e., the original warning tapes sourced from Agroplus, which have been used by the Defendant since 1996; and

Exhibit D26, i.e., the original warning tape from Electroplast, Holland. The first defence witness (“DW1”) avers that he visited the factory and obtained the sample pursuant to a visit in a letter of appointment dated 17.30.1993 pg 140 IDB 1. [16] Based on the two pieces of evidence alone, it is sufficient for this Court to conclude that there were warning tapes in Malaysia and elsewhere pre-dating 20.03.2014 that are similar to Exhibit P1. [17] The tapes purchased by the Defendant have features commonly used in the trade. The features of 3mm x 3mm are visible in both original samples produced by the Defendant. The only novelty feature is the gap in P1’s sample. This Court finds that the gap between the squares is immaterial to the design. [18] Therefore the facts above show that:

P1 has failed to establish the eye-appeal element in its ID since no real customers of P1 were called to give evidence on this issue.

The Defendant has successfully proven that P1’s design is not new as required under section 12 of the IDA 1996. [19] For the above reasons, I agree with the Defendant that P1’s registration should be revoked under section 24 of the IDA 1996. Since this Court agrees with the Defendant that P1’s registration should be revoked, I find there is no necessity to consider the issue of infringement of P2’s design rights. [20] For the reasons aforesaid, I dismiss the Plaintiffs’ claims and allow the Defendant’s counter-claim. Having heard the oral submissions by the parties on the issue of costs, considering the length of the trial, I award costs of RM40,000.00 to the Defendant. Dated 7 April 2025 …………t.t…………………. Ahmad Murad Bin Abdul Aziz Judge High Court of Malaya Kuala Lumpur COUNSEL FOR THE PLAINTIFFS: C.Y. CHUNG SOLICITORS FOR THE PLAINTIFFS: TETUAN C.Y. CHUNG & ASSOCIATES COUNSEL FOR THE RESPONDENT: DATO’ MURALEE MENON, DATIN CAROLYN AND VASANTHI SOLICITORS FOR THE RESPONDENT: TETUAN CH CHEAH CHAMBERS Cases Referred to: ➢ Anchorshol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd [2008] 10 CLJ 49 ➢ F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products Inc [2013] 1 LNS 380 Legislation Referred to: ➢ Industrial Design Act 1996 Decision date: 13 March 2025