So Yin Yit & 1 Lagi v Choong Hong Ken & 1 Lagi (WA-22IP-47-11/2016)

SO YIN YIT (NRIC No.: 571027-08-5163)

BESSTAR PLASTER MANUFACTURING SDN BHD (Co. No.: 629117-W) … PLAINTIFFS

CHOONG HON KEN (NRIC No.: 830823-14-5079)

UNIPLASTER MERKETING SDN BHD (Co. No.: 327545-P) … DEFENDANTS JUDGMENT (after trial)

This case concerns designs of “connectors” (which connect four aluminium bars to form square or rectangular frames for the production of plaster manhole covers).

The first plaintiff (1st Plaintiff) is the proprietor of the following two registered industrial designs (RID): 2

RID no. MY 11-01455-0303 (RID 1455). Attached to this judgment in Annexures A(1) to A(3) are the pictorial representations of the top view, side views and reference view of RID 1455 in the Register of Industrial Designs (Register); and

RID no. MY 13-00227-0101 (RID 227). A pictorial representation of RID 227 in the Register is attached to this judgment in Annexure B.

The 1st Plaintiff and the second plaintiff company (2nd Plaintiff) have entered into a license agreement dated 11.10.2011 wherein, among others, the 2nd Plaintiff has the exclusive right to use RID 1455. The 2nd Plaintiff is a company which manufactures plaster products for construction and interior works.

The first defendant (1st Defendant) is the owner of RID no. MY-15-00937- 0304 (RID 937). Attached to this judgment in Annexures C(1) to C(2) are the pictorial representations of the top view, side views and reference view of RID 937 in the Register.

The second defendant company (2nd Defendant) distributes and sells various plaster products.

The Plaintiffs have filed this suit (Plaintiffs’ Suit) for, among others, the following relief:

the expungement of RID 937 from the Register; and 3

injunctive and monetary relief based on the ground that the 1st and 2nd Defendants (Defendants) have infringed RID 1455.

The 1st Defendant has counterclaimed to revoke the registration of RID 1455 (1st Defendant’s Counterclaim) while the 2nd Defendant has counterclaimed to revoke the registration of RID 227 (2nd Defendant’s Counterclaim).

All the parties in this case have agreed for the Plaintiffs’ Suit, 1st Defendant’s Counterclaim and 2nd Defendant’s Counterclaim be heard together.

The following questions arise in this case:

whether a connector is an “article” within the meaning of s 3(1) of the Industrial Designs Act 1996 (IDA);

whether the features of shape and configuration (Features) of RID 1455 are Features in the “finished article” which “appeal to and are judged by the eye” (Eye Appeal Requirement) as provided in the definition of “industrial design” in s 3(1) IDA;

if the Features of RID 1455 fulfill the Eye Appeal Requirement -

are the Features “dictated solely by the function which the article has to perform” within the meaning of s 3(1)(b)(i) IDA?; and 4

whether the Features “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” as stated in s 3(1)(b)(ii) IDA;

are RID 1455, RID 937 and RID 227 (3 RID’s) “new” within the meaning of s 12(1), (2)(a) and/or (b) IDA? In this regard, whether the 1st Plaintiff may rely on s 23(1)(b) IDA;

if RID 1455 is valid, whether the Defendants have infringed RID 1455 under s 32(2)(a) and/or (c) IDA. In this respect, can the 1st Defendant rely on RID 937 as a defence regarding the infringement of RID 1455?; and

if a RID is not an “industrial design” in s 3(1) IDA and/or is not “new” [as required by s 12(1) IDA], whether the court should -

expunge the RID from the Register under s 24(1)(a) IDA; or

revoke the registration of the RID pursuant to s 27(1)(a) IDA. C. Plaintiffs’ case

The 1st Plaintiff gave evidence and called the following witnesses:

Mr. Lock Yit Siew (SP1), the 2nd Plaintiff’s “Contracts Manager”;

Mr. Lim Hok Leong (SP2). SP2 is a “freelancer” in engineering service;

Mr. Heng Chee Yuen (SP3); and 5

Mr. Lee Hoon Chuan (SP4).

According to the 1st Plaintiff, among others:

the 1st Plaintiff is involved in the business of manufacturing plaster products since 1998. Before the 1st Plaintiff invented RID 1455, an aluminium plaster manhole cover is produced as follows -

aluminium bars had to be cut at both ends at an angle of 45°; and

glue was applied at the ends of aluminium bars to stick them together to form a manhole cover frame of four sides (Conventional Method). The Conventional Method had the following problems -

if the ends of the bars were not properly cut, the bars could not be properly joined to form a manhole cover frame and the bars would therefore be useless; and

(ii) if the bars were properly cut and glued together, the manhole cover frame looked ugly as there were gaps between the bars;

to overcome problems caused by the Conventional Method, the first connector in RID no. MY11-00525-0303, exhibit P13 (RID 525), was invented by the 1st Plaintiff in April, 2011. The 1st Plaintiff then enhanced the look of RID 525 by inventing RID 1455. The connector 6 which embodies RID 1455 (Exhibit D4) has been adduced by the 1st Plaintiff in this case. As RID 1455 is “more appealing to the eye”, the 1st Plaintiff only focuses on the promotion and sales of RID 1455;

the 1st Defendant was a previous customer of the 1st Plaintiff until late 2016 (when the 1st Plaintiff found out that the 1st Defendant had supplied products embodying RID 1455). The 1st Defendant had asked the 1st Plaintiff on the process to produce manhole covers and the latter had “generously shared” the same with the former;

the 1st Plaintiff caused “trap purchases” of manhole covers to be made from the 2nd Defendant’s branches (2nd Defendant’s Goods). A few pieces of the 2nd Plaintiff’s Goods bore the 1st Plaintiff’s trade mark, “ASG” (1st Plaintiff’s Trade Mark); and

a manhole cover frame has an upper and lower frame. Connectors embodying RID 1455 are used to join aluminium bars for the upper frame. The 1st Plaintiff used connectors with a design similar to RID 937 to join aluminium bars for the lower frame [1st Plaintiff’s Design (Lower Frame)]. The 1st Plaintiff’s Design (Lower Frame) was not registered under IDA because the 1st Plaintiff had been informed by his industrial design agent (ID Agent) that there was no need to do so (Oral Hearsay Evidence). The 1st Plaintiff alleged that the 1st Defendant registered RID 937 because the 1st Defendant knew the 1st Plaintiff’s Design (Lower Frame) was not registered. Hence, the Plaintiffs’ Suit applied to, among others, to expunge RID 937 from the Register. 7

The 1st Plaintiff had instructed SP1 and SP2 to purchase the 2nd Defendant’s Goods (which had been adduced by the Plaintiffs as exhibits in this case).

SP3’s business manufactures ironwork for the construction of factories. SP3 purchases manhole cover frames (without the plaster) from the Plaintiffs and SP3’s factory will then seal the frames with plaster and supplies manhole covers. SP3 corroborated the 1st Plaintiff’s evidence regarding the Conventional Method and the “eye appeal” of Exhibit D4.

Since 2005, SP4 has a business in trading plaster products. SP4 purchases complete sets of plaster manhole covers from the Plaintiffs. SP4 shared the views of the 1st Plaintiff and SP3 regarding RID 1455. D. Defendants’ case

The 1st Defendant gave the following evidence, among others:

since around October 2011, the 1st Defendant is in the business of, among others, manufacture of aluminium plaster manhole covers. The 1st Defendant has a partnership, “LK Glass Construction”, which sells, among others, manhole covers;

before the 1st Defendant commenced business in the fabrication of manhole covers, he was a subcontractor for the installation of plaster ceilings for five to six years. Hence, the 1st Defendant is familiar with aluminium plaster manhole covers; 8

the connector which embodies RID 937 (Exhibit D14) has been produced by the 1st Defendant; and

regarding RID 1455 -

RID 1455 has no aesthetic feature and does not appeal to the 1st Defendant visually. Furthermore, once a manhole cover frame is fabricated, plastered and installed, the Features of RID 1455 are “never really likely to be seen by anyone”;

the 1st Defendant purchased connectors embodying RID 1455 solely because of their suitability to connect aluminium bars to form manhole cover frames. Hence, every feature of RID 1455 is dictated solely by function; and

the connector embodying RID 1455 is only used together with an aluminium bar embodying RID no. MY 13-00062-0107 (RID 062) to form an upper frame [which embodies RID no. MY 11-01453- 0103 (RID 1453)].

The 2nd Defendant called the following three witnesses to testify in this case:

Mr. Wong Thim Lean (SD2);

Mr. Moh Tack (SD3); and

Mr. Wong Siew Wah (SD4), the 2nd Defendant’s Managing Director. 9

SD2 is the sole proprietor of TL Marketing & Engineering Supply (TL) which is involved in, among others, the manufacture of plaster-related materials. According to SD2, among others -

in 2005, the 2nd Defendant engaged TL to design and manufacture plastic manhole cover frames (Plastic Manhole Cover Frames) for the 2nd Defendant. The 2nd Defendant has adduced a Plastic Manhole Cover Frame (Exhibit D19) as evidence in this case; and

all the Features of RID 227 are not new because those Features are similar to those found in Exhibit D19.

SD3 testified, among others, as follows:

the 2nd Defendant and Uniplaster Industries Sdn. Bhd. (UPI) are members of Uniplaster Group of Companies. UPI is the largest manufacturer of plaster ceiling and partition building materials in Malaysia;

SD3 is an employee of UPI since 1995 and is in charge of its Moulding Division’s daily production of plaster-related products;

UPI currently produces only plaster and plastic manhole covers. Since the end of 2016, UPI has stopped manufacturing aluminium frame manhole covers because their production -

entails a higher cost; 10

is more time consuming;

involves more labour; and

involves a risk of human error when the ends of the aluminium bars are cut;

UPI does not manufacture connectors for aluminium frame manhole covers;

regarding the 2nd Defendant’s Goods -

UPI previously purchased connectors and aluminium bars from

UPI then manufactured aluminium frame manhole covers which were sold to the 2nd Defendant; and

SD3 has the same view as the 1st Defendant regarding RID 1455. SD3’s evidence also corroborates SD2’s evidence concerning RID

227.

SD4’s evidence, among others, is as follows:

the 2nd Defendant does not manufacture and sell connectors. Nor does the 2nd Defendant manufacture plaster products. The 2nd Defendant only sells various plaster products, including manhole covers; 11

the price of a manhole cover is the most important consideration for a customer. Plaster manhole cover is the cheapest. Plastic manhole cover is in the medium range while aluminium frame manhole cover is the most expensive;

SD3 has not encountered a situation where a customer has enquired about the structure and configuration of a manhole cover;

the 2nd Defendant has not manufactured, sold or offered to sell any connector which embodies RID 1455 or RID 937; and

SD3’s evidence corroborates the following -

the 1st Defendant’s testimony regarding RID 1455; and

the evidence of SD2 and SD3 concerning RID 227.

I admit the Oral Hearsay Evidence to prove the fact that a statement has been made by the ID Agent to the 1st Plaintiff regarding the 1st Plaintiff’s Design (Lower Frame) - please see the Privy Council’s decision delivered by LMD De Silva in an appeal from the Federation of Malaya, Subramaniam v Public Prosecutor [1956] 1 MLJ 220, at 222. Despite the admission of the Oral Hearsay Evidence, I attach no weight to such evidence because -

the Plaintiffs have not called the ID Agent to give evidence in this case. No evidence has been adduced by the Plaintiffs on why the ID 12 Agent cannot be called or subpoenaed to testify in this case, especially when the ID Agent owes duties under ss 164 and 165 of the Contracts 1950 (CA) to the 1st Plaintiff (the ID Agent’s principal). Sections 164 and 165 CA provide as follows - “Agent’s duty in conducting principal’s business s 164. An agent is bound to conduct the business of his principal according to the directions given by the principal, or, in the absence of any such directions, according to the custom which prevails in doing business of the same kind at the place where the agent conducts the business. When the agent acts otherwise, if any loss be sustained, he must make it good to his principal, and, if any profit accrues, he must account for it. Skill and diligence required from agent s 165. An agent is bound to conduct the business of the agency with as much skill as is generally possessed by persons engaged in similar business, unless the principal has notice of his want of skill. The agent is always bound to act with reasonable diligence, and to use such skill as he possesses; and to make compensation to his principal in respect of the direct consequences of his own neglect, want of skill, or misconduct, but not in respect of loss or damage which are indirectly or remotely caused by such neglect, want of skill, or misconduct.” (emphasis added); and

the Defendants had no opportunity to cross-examine the ID Agent and could not ascertain the truth of what had been informed by the ID 13 Agent to the 1st Plaintiff - please see Tenaga Nasional Bhd v Api-api Aquaculture Sdn Bhd [2015] 3 AMR 811, at paragraphs 25-27, which has been affirmed by the Court of Appeal. F. Credibility of witnesses

There is no reason to doubt the veracity of SP1, SP2, SP3, SP4, 1st Defendant, SD2, SD3 and SD4. Nor has the cross-examination of these witnesses reveal any reason to prove that these witnesses are not credible.

I find as a fact that the 1st Plaintiff lacks credibility. This finding is premised on the following evidence and reasons:

in answers to questions no. 30 and 31 of the 1st Plaintiff’s witness statement, he testified that he filed civil suit no. 22IP-2-06/2015 against HKS in the Kuala Lumpur High Court based on infringement of, among others, RID 1455 (KL Suit). The KL Suit was then transferred to the Penang High Court (Penang Suit). During cross-examination by the 1st Defendant’s learned counsel, the 1st Plaintiff stated that he sold connectors embodying RID 1455 to the public in April 2011. However, the 1st Plaintiff changed his evidence during re-examination and testified that he only sold “first generation” connectors in April 2011 [1st Plaintiff’s Evidence (1st Generation Connector)]. The 1st Plaintiff’s Evidence (1st Generation Connector) is contradicted by the following documents -

the 1st Plaintiff affirmed an affidavit on 18.12.2015 [1st Plaintiff’s Affidavit (Penang Suit)] to support his application to amend his 14 statement of claim in the Penang Suit (SOC). The 1st Plaintiff’s Affidavit (Penang Suit), among others, referred to RID 1455 (in paragraphs 5 and 6) and exhibited a proposed amended SOC (ASOC). Paragraph 5 ASOC pleaded that since the filing of the 1st Plaintiff application to register RID 1455 on 27.4.2011, the 1st Plaintiff had manufactured, distributed, offered to sell and/or sold manhole cover frames which used connectors embodying, among others, RID 1455. The 1st Plaintiff’s application to amend the SOC had been allowed by the High Court in the Penang Suit. Thereafter the 1st Plaintiff had not applied to the court in the Penang Suit to amend or correct paragraph 5 ASOC. Paragraph 5 ASOC did not refer to the 1st Plaintiff’s Evidence (1st Generation Connector); and

the 1st Plaintiff and HKS entered into a consent judgment on 5.2.2016 (Consent Judgment). Paragraphs 2 and 4 Consent Judgment referred to RID 1455 and not to the 1st Plaintiff’s Evidence (1st Generation Connector). It is to be noted that any person who intentionally gives false evidence in a judicial proceedings (including during re-examination), commits an offence under the first limb of s 193 of the Penal Code (PC) and may be punished with imprisonment up to seven years and/or a fine. Section 193 PC reads as follows - “Punishment for false evidence 15 s 193. Whoever intentionally gives false evidence in any stage of a judicial proceeding, or fabricates false evidence for the purpose of being used in any stage of a judicial proceeding, shall be punished with imprisonment for a term which may extend to seven years, and shall also be liable to fine; and whoever intentionally gives or fabricates false evidence in any other case, shall be punished with imprisonment for a term which may extend to three years, and shall also be liable to fine.” (emphasis added);

the 1st Defendant applied to this court to amend his Defence and Counterclaim. The Plaintiffs opposed this application by affirming an affidavit on 9.11.2017, exhibit D18 [1st Plaintiff’s Affidavit (9.11.2017)]. Despite the fact that -

the 1st Plaintiff’s Affidavit (Penang Suit),

paragraph 5 ASOC and

the Consent Judgment had expressly referred to RID 1455, paragraphs 9 and 11 of the 1st Plaintiff’s Affidavit (9.11.2017) alleged that the Penang Suit had no relevance in this case! According to s 13 of the Oaths and Affirmations Act 1949 (OAA), every person giving evidence on any subject before a person authorized to administer oaths and affirmations (Commissioner for 16 Oaths) shall be bound to state the truth on such subject. Section 191 PC provides that if any person who is legally bound by an oath to state the truth, makes any statement which is false, and which he either knows or believes to be false, or does not believe to be true, is said to give false evidence. Accordingly, the 1st Plaintiff is bound by s 13 OAA to state the truth regarding RID 1455 in paragraphs 9 and 11 of the 1st Plaintiff’s Affidavit (9.11.2017). If the contents of an affidavit falls within s 191 PC, the deponent of the affidavit may have committed an offence of giving false evidence under s 191 read with the second limb of s 193 PC and may be punished with imprisonment up to three years and/or a fine; and

the 1st Plaintiff is the owner of RID 227. By reason of the 1st Plaintiff’s application to register RID 227, he claims that RID 227 is new pursuant to s 12(1) IDA. SD2, SD3 and SD4 have given mutually corroborative evidence that due to earlier creation of the Plastic Manhole Frame Covers, the features of RID 227 are not novel. The 1st Plaintiff did not adduce any evidence to refute the evidence of SD2, SD3 and SD4. It is difficult to believe a person who has claimed that a particular RID owned by the person is new when another RID of that person is credibly proven to be not novel. G. Judicial approach

I will decide the applications to invalidate RID 1455 before I decide on whether the Defendants have infringed RID 1455. This is due to the following reasons: 17

s 33(1) IDA confers a right on an “owner” of a RID to sue for infringement of the RID. For the purposes of s 33 IDA, an “owner” of a RID includes a licensee (such as the 2nd Plaintiff) - please see s 33(4) IDA. If a RID is invalidated, there cannot be any basis for a suit for RID infringement – please see Ramly Ali JCA’s (as he then was) judgment in the Court of Appeal case of F & N Dairies (M) Sdn Bhd v Tropicana Products Inc and other appeals [2013] MLJU 1591, at paragraphs 130-132; and

according to s 22(3) IDA, the certificate of registration of a RID “shall be prima facie evidence of the facts stated therein and of the validity of the registration” of the RID - please see Suriyadi Halim Omar J’s (as he then was) judgment in the High Court case of Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd & Anor [2005] 3 MLJ 30, at paragraph 8. Accordingly, a party seeking to expunge or revoke the registration of a RID, bears the evidential burden to invalidate the RID. H. Is a connector an “article” in s 3(1) IDA?

The 1st Defendant has submitted that a connector is not an “article” because it is not “made and sold separately” as required by the definition of “article” in s 3(1) IDA. Reliance was placed on the following cases from the

the House of Lords’ decision in Ford Motor Co Ltd’s Design Applications [1995] RPC 167 (Ford’s Case); and 18

the High Court’s judgment in Sifam Electrical Instrument Co Ltd v Sangamo Western Ltd [1973] RPC 899 (Sifam’s Case).

I refer to the definition of “article” in s 3(1) IDA as follows: “3(1) In this Act, unless the context otherwise requires - … “article” means any article of manufacture or handicraft, and includes any part of such article or handicraft if that part is made and sold separately but does not include an integrated circuit or part of an integrated circuit within the meaning of the Layout-Designs of Integrated Circuits Act 2000 [Act 601], or a mask used to make such an integrated circuit;” (emphasis added).

There is no previous Malaysian case which has interpreted the meaning of the term “article” in s 3(1) IDA. I am of the following view regarding the definition of “article” in s 3(1) IDA:

an “article” in s 3(1) IDA may consist of -

“any article of manufacture” (1st Limb);

any “handicraft” (2nd Limb); and

any part of an article or handicraft “if that part is made and sold separately” (3rd Limb). 19 The 1st to 3rd Limbs of the definition of “article” in our s 3(1) IDA are in pari materia with the definition of “article” in s 44(1) of UK’s Registered Designs Act 1949 [RDA 1949 (UK)]. Accordingly, I accept the following UK cases which have interpreted the 3rd Limb -

in Sifam’s Case, at p. 913 and 914, Graham J decided as follows - “I come then to the final question: Was the design of the meter front in sketch No 10 registrable under [RDA 1949 (UK)]? This depends on the words of sections 1 and 44 [RDA 1949 (UK)] ... The meter front here is not now and never has been sold separately nor was it ever intended that it should be. The words of the section are, however, difficult because they cannot be read strictly literally. If an article or part of an article is in fact being sold at the time of the application to register that in itself would invalidate the registration because the design would have been published and would not be “new or original” within subsection (2). What then do the words mean? The defendants say they mean “susceptible of being sold separately”, which they say this meter front is. But here again any part of any article is susceptible of being sold separately even if, for example, the part has to be forcibly removed from the whole of the article of which it forms part. A possible dividing line might be drawn between parts which are detachable and parts which are not, but again nowadays it is common to sell parts of larger articles which are intended to be permanently fixed to the larger article of which they are to form part by welding or other permanent fixing. Why 20 should designs not be registrable for such parts which are susceptible of industrial design and of being dealt with as articles of commerce? However to give the words such a meaning would have the result that any part of any article could then be registered and thus would defeat the apparent intention of the Act. One might also then ask: When is part of an article not an article in its own right? I find the matter difficult to decide, but on the whole I think the intention must be to grant registration only for such articles as are intended by the proprietor of the design to be put on the market and sold separately, … … the only possible interpretation, which does not do undue violence to the intention of the Act or present Office practice, which it is not desirable to upset if it can be avoided, is to give them the meaning “is to be sold separately” . The words used are “if that part is made and sold separately”, and the phrase as a whole, to my mind, confirms that both the manufacture and sale of the part in question must be operations which are distinct from the manufacture and sale of the whole article of which the “part” forms a component. It is necessary to imply the words “to be” in order to construe the phrase as not including sale of the part prior to or at the date of the application for registration since this would produce an absurd result contrary to section 1(2), would invalidate the registration, and cannot possibly have been the intention of the legislature.” (emphasis added); and 21

(ii) Sifam’s Case has been followed by Lord Mustill in Ford’s Case, at p. 178-179, as follows - “If the Act had been concerned with, say, consumer protection, this would no doubt have been correct. But here the legislation is concerned not with finished articles but with the design sought to be registered, ex hypothesi before the articles are made; and the articles themselves are relevant only because they form the media through which the designs intended to be registered under the statute will be put into effect. One must therefore look, not to the history of articles which already exist, but to the characteristics which they will have when the design fulfils its intended purpose. I can therefore see no escape from the conclusion reached by Graham J. in the [Sifam’s case] that section 44(1) must be read as meaning “… if that part is to be made and sold separately”. … My Lords, for these reasons I have been compelled to give up the attempt to read the words of the definition literally, and will instead look behind them for the intention of the legislature. In my opinion the purpose was to distinguish between, on the one hand, an item designed for incorporation, whether as a spare part or as an original component, in a particular article or range of articles made by the manufacturer of the component, and on the other an item designed for general use, albeit perhaps aimed principally at use with manufacturer's own artifacts. Whilst it is often unwise to restate the effect of a statute in different words, since this may lead to the new formula being subjected to the kind of textual analysis which ought to be reserved to the 22 statute itself, an answer will I believe be supplied in many cases by applying the criterion given by McCowan L.J., namely: that to qualify under section 44(1) a spare part has to have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part.” (emphasis added). Based on Sifam’s Case and Ford’s Case, a “part of an article” can constitute an “article” within the meaning of the 3rd Limb (and its industrial design may be registered under the IDA if all the registration requirements of IDA are fulfilled) if both the manufacture and sale of the “part” are separate from the manufacture and sale of the whole article in question. Additionally, a “part of an article” may constitute an “article” in the 3rd Limb if the “part” has an “independent life as an article of commerce” and is not “merely an adjunct of some larger article of which it forms part” - please see McCowan L.J’s judgment in Ford’s Case; and

the following subject matter cannot constitute an “article” -

an integrated circuit (IC) within the meaning of Layout-Designs of

part of an IC as understood in LDICA; or

a mask used to make an IC. 23

I am not able to accept the 1st Defendant’s above contention. I find that a connector is an “article” within one or more of the following meanings of the definition of “article” in s 3(1) IDA:

connectors are manufactured on their own. Accordingly, a connector is an “article of manufacture” within the meaning of the 1st Limb; and/or

even if a connector is considered a “part” of an aluminium manhole cover frame, a connector is still an “article” as understood in the 3rd Limb because both the manufacture and sale of connectors are separate from the manufacture and sale of aluminium manhole cover frame - please see Sifam’s Case and Ford’s Case. Furthermore, a connector has an “independent life as an article of commerce” and is not “merely an adjunct” of an aluminium manhole cover frame - please see McCowan L.J’s judgment in Ford’s Case. I. What constitutes an “industrial design”?

Section 3(1) IDA has defined “industrial design” as follows: ““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 - 24

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;” (emphasis added).

Our definition of “industrial design” in s 3(1) IDA is similar to the definition of “design” in s 1(1) RDA 1949 (UK). Consequently, UK cases on the interpretation of “design” in s 1(1) RDA 1949 (UK) may be referred in the construction of our definition of “industrial design” in s 3(1) IDA.

Based on my understanding of cases decided in Malaysia and UK, I am of the following view regarding the definition of “industrial design” in s 3(1)

the definition of “industrial design” in s 3(1) IDA has three elements (3 Elements) as follows -

“features of shape, configuration, pattern or ornament” (1st

the features in the 1st Element -

have been “applied to an article by any industrial process or means” (2nd Element). The term “article” is defined in s 3(1) IDA and has been explained in the above Part H; and 25

(ii) “being features which in the finished article appeal to and are judged by the eye” (3rd Element). The 3rd Element concerns the Eye Appeal Requirement which will be elaborated below; and

even if the 3 Elements are satisfied, the following features do not constitute an “industrial design” -

if the features concern “a method or principle of construction”; or

if the features of shape or configuration of an article -

are “dictated solely by the function which the article has to perform” [Section 3(1)(b)(i) Exclusion]; or

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” [Section 3(1)(b)(ii) Exclusion]. J. Whether Features of RID 1455 fulfill Eye Appeal Requirement

In deciding whether the Features of RID 1455 have fulfilled the Eye Appeal Requirement, I adopt the following approach based on cases decided in

the court has to identify the “finished article” [in the definition of “industrial design” in s 3(1) IDA] which embodies the RID in question (Finished Article) - please see Farwell J’s judgment in the English 26 High Court case of Dunlop Rubber Co Ltd v Golf Ball Development Ltd (1931) 48 RPC 268, at 277;

the court should ascertain the relevant customer, purchaser, consumer or user of the Finished Article (Relevant Customer) - F & N Dairies, at paragraphs 31-39, 44, 45 and 46;

the court shall decide whether the “features of shape, configuration, pattern or ornament” in the Finished Article “appeal” to the Relevant Customer. In this regard, the court shall don the mantle of the Relevant Customer - please see Aldous J’s (as he then was) judgment in the English High Court in Valeo Vision Societe Anonyme & Anor v Flexible Lamps Ltd [1995] RPC 205, at 215 (Valeo’s Case). Valeo’s Case has been followed by our Court of Appeal in F & N Dairies, at paragraphs 41 and 44. Pursuant to s 60(3) of the Evidence Act 1950 (EA), the court may examine the Finished Article. Section 60(3) EA provides as follows - “60(3) If oral evidence refers to the existence or condition of any material thing including a document, the court may, if it thinks fit, require the production of that material thing or the document for its inspection.” (emphasis added). The following features cannot be considered by the court - 27

features of the Finished Article which are not registered in the

features which are not visible in the Finished Article - F & N Dairies, at paragraph 37; and

the colour or material of the Finished Article - please see Slade LJ’s judgment in the English Court of Appeal in Sommer Allibert (UK) Ltd & Anor v Flair Plastics Ltd [1987] RPC 599, at 623. The following cases are relevant regarding the application of the Eye

the Court of Appeal decided as follows in F & N Dairies, at paragraph 39 - “[39] The words “judged by the eye” will exclude cases where it is shown that the customer is not influenced in choice by appearance only but by the criteria of suitability for purpose (see: Martin Howe, on Industrial Designs, Seventh Edition, Sweet and Maxwell, 2005 - page 88). …” (emphasis added);

(ii) in Amp Inc. v Utilux Proprietary Ltd [1971] FSR 572 (Amp’s Case) - (iia) Lord Reid decided as follows, at p. 576-577 - 28 “… the policy of the Act was to preserve to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have the design to that of those which do not have it. ... And the words “judged solely by the eye” must be intended to exclude cases where a customer might choose an article of that shape not because of its appearance but because he thought that the shape made it more useful to him. … The onus is on the person who attacks the validity of the registration of a design. So he would have to shew on a balance of probability that an article with the design would have no greater appeal by reason of its appearance to any member of the public than an article which did not have this design.” (emphasis added). Lord Donovan concurred with Lord Reid’s judgment (at p. 591); (iib) Lord Morris held as follows, at p. 582 - “The phrases “appeal to” and “judged solely by the eye” denote features which will or may influence choice or selection. ... 29 Beyond being merely visible the feature must have some individual characteristic. It must be calculated to attract the attention of the beholder.” (emphasis added); and

(iic) according to Lord Pearson, at p. 594 - “There must be in some way a special, peculiar, distinctive, significant or striking appearance - something which catches the eye and in this sense appeals to the eye.” (emphasis added); and

(iii) Lord Oliver delivered the following judgment of the Privy Council in an appeal from Hong Kong, Interlego AG v Tyco Industries Inc & Ors [1988] 3 All ER 949, at 957 and 960 - “First, the primary essential before a shape can be registered as a design is that it should have eye-appeal and in this context (a) the eye is that of the prospective customer and (b) the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer's choice. … … In assessing eye-appeal the motive or purpose of the designer, whilst not conclusive, is clearly of relevance.” (emphasis added); and 30

in deciding whether the features of a RID has satisfied the Eye Appeal Requirement, expert evidence is not required - Dart Industries Inc & Anor v CMN International Sdn Bhd & Ors (and other suits) [2018] 1 AMR 153, at sub-paragraph 10(8).

Firstly, regarding RID 1455, the Finished Article is the connector and not -

the aluminium frame, be it the upper or lower frame; and

the aluminium plaster manhole cover.

Secondly, the Relevant Customer for RID 1455 is a prospective purchaser of connectors. I make the following finding of fact regarding which witness can be considered to be the Relevant Customer for RID 1455:

there is no evidence to show that SP1 has any experience in selling connectors. This court cannot therefore consider SP1 to be the Relevant Customer;

SP2, SP3, SP4, SD2 and SD4 do not purchase or sell connectors. Accordingly, SP2, SP3, SP4, SD2 and SD4 cannot be considered as the Relevant Customer; and

SD3 had experience regarding UPI’s purchase of connectors from HKS. As such, I accept SD3 as the Relevant Customer. 31

I am of the view that the registered Features of RID 1455 (Registered Features) do not satisfy the Eye Appeal Requirement. This finding of fact is premised on the following evidence and reasons:

I have donned the mantle of the Relevant Customer and examined the Registered Features [in Annexures A(1) to A(3)] (1st Examination). As the Relevant Customer, I have also physically examined Exhibit D4 (the Finished Article which embodies RID 1455) (2nd Examination). The 1st and 2nd Examinations -

show that the Relevant Customer “is not influenced in choice by appearance only but by the criteria of suitability for purpose” of connectors embodying RID 1455 [Connectors (RID 1455)] - F & N Dairies, at paragraph 39;

do not show that the Relevant Customer may choose Connectors (RID 1455) instead of connectors which do not have the Registered Features - please see Lord Reid’s judgment in Amp’s

do not disclose any Registered Feature which has “some individual characteristic .. calculated to attract the attention” of the Relevant Customer - please see Lord Morris’ judgment in Amp’s

do not show that RID 1455 has “a special, peculiar, distinctive, significant or striking appearance - something which catches the 32 eye” of the Relevant Customer - please see Lord Pearson’s judgment in Amp’s Case; and

do not reveal that RID 1455 has a “distinctiveness of [Registered Feature] calculated to influence” the Relevant Customer's choice -

SD3, as the Relevant Customer [please see the above sub-paragraph 33(3)], has testified that RID 1455 has no eye appeal.

I have not overlooked the evidence of the 1st Plaintiff and 1st Defendant (the designer of RID 1455 and RID 937 respectively) regarding the Eye Appeal Requirement. Although the evidence of a designer of RID is relevant (please see Interlego), I attach no weight to the evidence of the 1st Plaintiff and 1st Defendant due to the following reasons:

the 1st Plaintiff is not a credible witness - please see the above paragraph 22; and

the 1st Defendant is an interested party in this case.

The 1st Plaintiff’s Trade Mark is not a Registered Feature. Accordingly, this court cannot consider the 1st Plaintiff’s Trade Mark in deciding whether the Registered Features have fulfilled the Eye Appeal Requirement. K. Are Registered Features dictated solely by function?

In deciding whether RID 1455 falls within Section 3(1)(b)(i) Exclusion, I adopt the following approach:

in Amp’s Case, at p. 596, Lord Pearson decided that the phrase “dictated by” in Section 3(1)(b)(i) Exclusion means “attributable to or caused or prompted by”;

according to Interlego, at p. 957 -

Section 3(1)(b)(i) Exclusion applies when every registered feature of the RID is “brought about only by” or is “attributable only to” the function which the article has to perform. For Section 3(1)(b)(i) Exclusion to apply, there is no requirement to show that the function cannot be performed by an article in some other shape. Furthermore, if every registered feature of the RID is “brought about only by” or is “attributable only to” the function which the article has to perform, Section 3(1)(b)(i) Exclusion applies even if the function can be performed by an article of a different shape; and

if every registered feature of the RID is “brought about only by” or is “attributable only to” the function which the article has to perform, Section 3(1)(b)(i) Exclusion applies even if those features fulfill the Eye Appeal Requirement; and

in F & N Dairies, at paragraphs 50 and 52, our Court of Appeal has applied Amp’s Case and Interlego.

I find as a fact that all the Registered Features are - 34

“brought about only by”;

“attributable only to”;

“caused only by”; and/or

“prompted only by” the following three functions (3 Functions) -

the practical problems caused by the Conventional Method are overcome by Connectors (RID 1455) -

aluminium bars need not be cut at both ends at an angle of 45°. There is a saving of time, labour and expense. There is also no wastage of aluminium bars which are improperly cut at an angle of 45°; and

(ii) there is no occupational hazard caused by sharp aluminium bars cut at an angle of 45°;

the “tongue” of a Connector (RID 1455) can be easily inserted into an article which embodies RID 062 [Article (RID 062)]. This will enable the entire surface of Connector (RID 1455) to be flushed with the surface of Article (RID 062); and

Connector (RID 1455) has the function of ensuring that liquid plaster does not leak during the fabrication of aluminium plaster manhole covers. 35 Premised on the above evidence and reasons, even if it is assumed that the Registered Features have satisfied the Eye Appeal Requirement, RID 1455 nevertheless falls within Section 3(1)(b)(i) Exclusion. Accordingly, RID 1455 cannot constitute an “industrial design” under s 3(1) IDA. L. Whether RID 1455 fall within Section 3(1)(b)(ii) Exclusion

Section 3(1)(b)(ii) Exception applies when the registered features of a RID in the Finished Article are dependent upon the appearance of another article (Other Article) of which the Finished Article is intended by the RID’s author to form an integral part with the Other Article. In the High Court in Ford’s Case [1993] RPC 399, at 419-420, Deputy High Court Judge Julian Jeffs QC decided as follows: “That would be enough to deny registration to any of the articles which I have put in the first group, but in case I am wrong about that, I shall now consider section 1(1)(b)(ii) [RDA 1949 (UK)] - the “must match” section. … Various possible meanings for the word “integral” have been urged upon me, but giving the words their normal English meaning, the door panel is the first “article” and the other “article”, of which the article is intended by the author of the design to form an integral part, is the vehicle. The door panel is part of the door and the door forms an essential, integral, part of the vehicle. The word “integral” was, I am informed, inserted at a late stage in the passage of the bill to avoid difficulties with items which do not stand alone but which nevertheless do not form part of a whole, such as cups and saucers or knives and forks. The word is apt for the purpose of avoiding the difficulties that such items might otherwise pose. 36 Some parts of a vehicle may be replaceable with parts of a different configuration. … But even when there are slight modifications such as that, the general shape and configuration of one door is decided by the other. It must match. ... Such components are “must match” and are unregisterable owing to the provisions of section (1)(b)(ii) [RDA 1949 (UK)].” (emphasis added).

Julian Jeffs QC’s decision in Ford’s Case regarding Section 3(1)(b)(ii) Exception has been affirmed by McCowan LJ in the Divisional Court, [1994] RPC 545. Lord Mustill however did not decide on the application of Section 3(1)(b)(ii) Exception in the House of Lords in Ford’s Case. In the High Court case of Veresdale Ltd v Doerwyn Ltd [2015] 7 MLJ 836, at paragraphs 22 and 23, Azizah Nawawi JC (as she then was) followed Julian Jeffs QC’s decision in Ford’s Case regarding Section 3(1)(b)(ii) Exception. I have no hesitation to adopt Julian Jeffs QC’s “must match” test in the application of Section 3(1)(b)(ii) Exception (as followed in Veresdale).

Firstly, I find as a fact that the Registered Features of Connector (RID 1455) are dependent upon the appearance of Article (RID 062) of which the Connector (RID 1455) is intended by the 1st Plaintiff to form an integral part with Article (RID 062). The evidence of the 1st Defendant and SD3 support such a finding of fact. Furthermore, once a Connector (RID 1455) has joined Articles (RID 062), the Connector (RID 1455) is no longer visible, especially after the fabrication of an aluminium plaster manhole cover. 37

Additionally or alternatively, a Connector (RID 1455) matches Article (RID 062) so as to form Exhibit P2. Accordingly, by reason of an application of the “must match” test as explained by Julian Jeffs QC in Ford’s Case, RID 1455 falls within Section 3(1)(b)(ii) Exception. M. Are 3 RID’s new under s 12(1), (2)(a) and (b) IDA?

Section 12 IDA provides as follows: “Registrable industrial design 12(1) 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 to be 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;

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.

For the purposes of paragraph (2)(a), an industrial design shall not be deemed to have been disclosed to the public solely by reason of the fact that, within the period of six months preceding the filing date of an application for registration - 38

it appeared in an official or officially recognized exhibition; or

it 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 other person or another person.” (emphasis added).

It is clear that pursuant to s 12(1) IDA if an “industrial design” (ID) is not new, the ID “shall” not be registered - F & N Dairies, at paragraphs 72 and

Section 12(2)(a) and (b) IDA provides the following five circumstances wherein an ID (X) is not new:

X has been disclosed to the public in Malaysia before the “priority date” of the application to register X (Priority Date) - s 12(2)(a) IDA. Section 12(2)(a) IDA does not apply in the two situations provided in s 12(3)(a) and (b) IDA;

X is the subject matter of an RID application by another applicant which has an earlier Priority Date - s 12(2)(b) IDA;

another ID (Y) [which differs from X in “immaterial details”] has been disclosed to the public before the Priority Date - s 12(2)(a) IDA. Once again, s 12(2)(a) IDA does not apply in the circumstances stated in s 12(3)(a) and (b) IDA;

Y differs from X “in features commonly used in the relevant trade” and Y has been disclosed to the public before the Priority Date - s 12(2)(a) 39 IDA [s 12(2)(a) IDA does not apply in situations provided in s 12(3)(a) or (b) IDA]; or

Y is the subject matter of an RID application by another applicant which has an earlier Priority Date - s 12(2)(b) IDA. M(1). RID 1455

According to s 17(1) IDA, the Priority Date of an application to register an ID is the date of the application. The Priority Date for RID 1455 is 29.9.2011 (date of the 1st Plaintiff’s application to register RID 1455).

Paragraph 5 ASOC in the Penang Suit pleaded that the 1st Plaintiff had manufactured, distributed, offered to sell and sold manhole cover frames which embodied RID 1455 since 27.4.2011. The circumstances explained in s 12(3)(a) and (b) IDA do not apply regarding RID 1455. Accordingly, RID 1455 had been disclosed to the public on 27.4.2011 [before the Priority Date for RID 1455 (29.9.2011)] within the meaning of s 12(2)(a) IDA. On this ground alone, RID 1455 is not novel within the meaning of s 12(1) IDA and is therefore invalid.

The 1st Plaintiff has relied on s 23(1)(b) IDA. Section 23(1)(b) IDA provides as follows: “Registration of the same industrial design in respect of other articles 23(1) Where an industrial design has been registered in respect of any article and the owner thereof makes an application - 40

for registration, in respect of one or more other articles, of the registered industrial design; or

for registration, in respect of the same or one or more other articles, of an industrial design consisting of the registered industrial design with modifications or variations not sufficient to alter the character or substantially to affect the identify thereof, the application shall not be refused, and the registration made on that application shall not be invalidated by reason only of the previous registration, or of any disclosure or use after the priority date in respect of the application for the previous registration, of the industrial design registered on that application.” (emphasis added). Section 23(1)(b) IDA applies in the following circumstances:

a person (A) has registered an ID (1st RID) in respect of an article (Article Z);

A subsequently applies to register a second ID (2nd ID) in respect of Article Z or one or more of articles (other than Article Z). The 2nd ID has “modifications or variations not sufficient to alter the character or substantially to affect the identify” of the 1st RID; and

A’s application to register 2nd ID shall not be refused and the registration of 2nd ID shall not be invalidated by reason only of -

the previous registration of the 1st RID; or 41

any disclosure or use of the 1st RID after the Priority Date for the 1st RID’s application. I am of the view that s 12(1) IDA is subject to s 23(1)(b) IDA. This is clear from the opening words (Subject to this Act) in s 12(1) IDA. Having said that, the 1st Plaintiff cannot avail himself of s 23(1)(b) IDA to “save” RID

This is because s 23(1)(b) IDA only applies to “save” RID 1455 if the following circumstances exist -

there is a prior registration, disclosure and/or use of 1st RID (not RID 1455); and

there is proof that RID 1455 has “modifications or variations not sufficient to alter the character or substantially to affect the identify” of the 1st RID. The absence of the above circumstances, in my view, disentitles the 1st Plaintiff from relying on s 23(1)(b) IDA to “save” RID 1455 from the application of s 12(1) and (2)(a) IDA (due to paragraph 5 ASOC in the Penang Suit). M(2). RID 937

The Priority Date of RID 937 is 7.8.2015 (date of application to register RID 937).

I have examined the registered features of RID 1455 and RID 937. I have also examined Exhibit D4 [Article (RID 1455)] and Exhibit D14 (Finished 42 Article embodying RID 937). These two examinations show that RID 937 differs from RID 1455 in “immaterial details” within the meaning of s 12(2) IDA. Consequently, RID 937 is not new under s 12(1) IDA for any one or both of the following reasons:

RID 1455 has been disclosed to the public pursuant to s 12(2)(a) IDA on 27.4.2011 [before the Priority Date of RID 937 (7.8.2015)]; and/or

RID 1455 has an earlier Priority Date (29.9.2011) than the Priority Date for RID 937. As such, RID 937 is not novel by reason of the application of s 12(2)(b) IDA. M(3). RID 227

RID 227 has a Priority Date of 19.2.2013 (date of application to register

The evidence of SD2, SD3 and SD4 clearly states that all the features of RID 227 are similar to the features of the Plastic Manhole Cover (Exhibit D19). According to SD2, the Plastic Manhole Cover has been designed and manufactured in 2005. Such evidence has not been rebutted by the 1st Plaintiff. Hence, RID 227 is not new under s 12(1) IDA because pursuant to s 12(2)(a) IDA, RID 227 has been disclosed to the public in 2005 [before the Priority Date of RID 227 (19.2.2013)] in the form of the Plastic Manhole Cover. 43 N. Have Defendants infringed RID 1455?

The relevant part of s 32 IDA provides as follows: “32(1) Subject to the provisions of this Act, the owner of a registered industrial design shall have the exclusive right to make or import for sale or hire, or for use for the purposes of any trade or business, or to sell, hire or to offer or expose for sale or hire, any article to which the registered industrial design has been applied.

Subject to section 30, a person infringes the rights conferred by the registration of an industrial design if he, without the licence or consent of the owner of the industrial design, does any of the following things while the registration is still in force:

applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;

imports into Malaysia for sale, or for use for the purposes of any trade or business, any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner; or

sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles described in paragraphs (a) and (b).” (emphasis added).

Section 34 IDA provides that any ground to revoke a RID is available as a defence in an action for an infringement of RID. In this case, the 1st 44 Defendant’s Counterclaim has sought to invalidate RID 1455 and this court has decided that RID 1455 is invalid on one or more of the following four grounds:

the Registered Features do not satisfy the Eye Appeal Requirement - please see the above paragraph 34;

RID 1455 falls within Section 3(1)(b)(i) Exclusion - please see the above paragraph 38;

Section 3(1)(b)(ii) Exclusion applies to RID 1455 - please see the above paragraphs 41 and 42; and/or

RID 1455 is not new within the meaning of s 12(1) and (2)(a) IDA - please see the above paragraph 46. In view of the invalidity of RID 1455, the Plaintiffs’ Suit based on an infringement of RID 1455 against the Defendants cannot succeed.

Assuming RID 1455 is valid, I am of the following view:

the 1st Defendant can rely on RID 937 as a defence against the Plaintiffs’ Suit based on an infringement of RID 1455. This is because until the court expunges RID 937 from the Register under s 24(1)(a) IDA or revokes the registration of RID 937 pursuant to s 27(1)(a) IDA, the 1st Defendant “shall have the exclusive right to make or import for sale or hire, or for use for the purposes of any trade or business, or to sell, hire or to offer or expose for sale or hire, any article to which the 45 registered industrial design has been applied” under s 32(1) IDA. The exercise of such a statutory and exclusive right under s 32(1) IDA by the 1st Defendant based on RID 937, cannot constitute an infringement of any other RID, including RID 1455;

if the court expunges RID 937 from the Register under s 24(1)(a) IDA or revokes the registration of RID 937 pursuant to s 27(1)(a) IDA, I find that connectors embodying RID 937 constitute a “fraudulent imitation” and/or “obvious imitation” of RID 1455 under s 32(2)(a) IDA. Consequently, the 1st Defendant would have infringed RID 1455 according to s 32(2)(a) and/or (c) IDA. I refer to Dart Industries, at sub-paragraph 10(2), as follows - “10(2) without the licence or consent of the RID’s owner, a defendant commits RID Infringement when the defendant commits any one of the following acts (Infringing Act) -

when the defendant -

“applies” the plaintiff’s RID to any “article” [please see the meaning of “article” in s 3(1) read with (2)(a), (b) and (c) IDA] in respect of which the plaintiff’s RID is registered;

(ii) applies any “fraudulent imitation”” of the plaintiff’s RID to any article in respect of which the plaintiff’s RID is registered; or

(iii) applies any “obvious imitation” of the plaintiff’s RID to any article in respect of which the plaintiff’s RID is 46 registered - Honda (at paragraph 23) and Alpha Home Appliance (at paragraphs 43 and 55) [please see s 32(2)(a) IDA];

when the defendant imports into Malaysia for -

sale or

(ii) use for the purposes of any trade or business - any article to which the plaintiff’s RID or any fraudulent or obvious imitation of the plaintiff’s RID has been applied outside Malaysia without the licence or consent of the plaintiff [please see s 33(2)(b) IDA];

when the defendant -

sells

(ii) offers for sale

(iii) keeps for sale

(iv) hires

offers for hire or

(vi) keeps for hire - any of the articles described in s 32(2)(a) or (b) IDA [please see s 32(2)(c) IDA]; …” (emphasis added); and 47

there is no evidence that the 2nd Defendant has committed any of the acts stated in s 32(2)(a), (b) and (c) IDA. Accordingly, the Plaintiffs’ Suit against the 2nd Defendant for an infringement of RID 1455 must fail. O. Whether court should expunge RID from Register or revoke its registration

The relevant parts of ss 24 and 27 IDA read as follows: “24(1) Subject to the provisions of this Act -

the Court may, on the application in the prescribed manner, of any person aggrieved by or interested in the non‐inclusion in or omission from the Register of any entry, or by or in any entry made in the Register without sufficient cause, or any entry wrongfully remaining in the Register, or any error or defect in any entry in the Register, make such order for including, making, expunging or varying any such entry or for the correcting of any such error or defect as it deems fit; …

Notwithstanding subsection (1), the Court shall not make any order on the application of a person other than the Registrar until notice of such application has been given to the Registrar who shall be entitled to appear and be heard on the application. … 27(1) At any time after the registration of an industrial design, any person may apply to the Court - 48

for the revocation of the registration of the industrial design on the ground, subject to section 12, that the industrial design has been disclosed to the public prior to the priority date of the application for registration of the industrial design;

for the cancellation of the registration of the industrial design on the ground that the registration of the industrial design has been procured by unlawful means;

for the grant of a compulsory licence in respect of the industrial design on the ground that the industrial design is not applied in Malaysia by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case, and the Court may make such order on the application as it considers just. …” (emphasis added).

I am of the view that the avenue to rectify the Register in s 24(1)(a) IDA (Rectification Application) is different from the procedure stated in s 27(1) IDA (Revocation Application) as follows -

a party can only file a Rectification Application if the party is “aggrieved by or interested in the non‐inclusion in or omission from the Register of any entry”. However, “any person” can make a Revocation Application and need not be aggrieved by or interested in the RID - please see Hanipah Farikullah JC’s (as she then was) judgment in the High Court 49 case of Koay Kar Kheng (as the public officer of Persatuan Pedagang-pedagang Barang-barang Sembahyang Malaysia) v Seong Loong (M) Sdn Bhd [2013] 1 AMCR 676, at 683;

before the court decides a Rectification Application, s 24(2) IDA mandatorily requires notice of the Rectification Application to be given to the Registrar of Industrial Designs - please see Vincent Ng J’s (as he then was) decision in the High Court in Arensi-Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 4 MLJ 46, at paragraph 7;

in a Rectification Application, the court may rectify the Register by “making, expunging or varying” any entry in the Register - Arensi-Marley, at paragraph 10. The court can only revoke the registration of a RID in a Revocation Application - Arensi-Marley, at paragraph 10; and

a Rectification Application may be allowed on any one of the following grounds -

there is a non-inclusion in or omission from the Register of any entry;

an entry has been made in the Register without sufficient cause;

an entry wrongfully remains in the Register; or

there is an error or defect regarding an entry in the Register. 50 The court can only revoke the registration of a RID based on the circumstances prescribed in s 27(1)(a), (b) or (c) IDA.

The 3 RID’s are not new under s 12(1), (2)(a) and/or (b) IDA (please see the above paragraphs 46, 49 and 51). Accordingly, s 27(1)(a) IDA is triggered. In the circumstances, I am of the view that the Revocation Application (not Rectification Application) is apt in this case.

Once a ground to revoke a RID is proven, the court “may make such order on the [Revocation Application] as it considers just” under s 27(1) IDA. I am of the view that the court has the discretionary power pursuant to s 27(1) IDA to order when the revocation of the registration of the RID shall take effect.

With regard to RID 1455, I exercise my discretion under s 27(1) IDA to revoke the registration of RID 1455 with effect from 29.9.2011 (Priority Date for RID 1455). This is because RID 1455 does not fall within the definition of “industrial design” in s 3(1) IDA for the following reasons:

the Registered Features do not satisfy the Eye Appeal Requirement - please see the above paragraph 34;

RID 1455 falls within Section 3(1)(b)(i) Exclusion - please see the above paragraph 38; and

Section 3(1)(b)(ii) Exclusion applies to RID 1455 - please see the above paragraphs 41 and 42. 51

This court exercises its discretion to revoke the registration of RID 937 with effect from 16.3.2018 [date of the oral decision of this case (Oral Decision)]. This is because the 1st Defendant is entitled under s 32(1) IDA to rely on RID 937 as a defence against the Plaintiffs’ Suit for the infringement of RID 1455 - please see the above sub-paragraph 54(1).

In respect of RID 227, I exercise my discretion to revoke the registration of RID 227 with effect from 19.2.2013 (Priority Date for RID 227).

Regarding the costs of this case, I exercise my discretion under O 59 rr 2(2) and 19(1) of the Rules of Court 2012 as follows:

as between the Plaintiffs and the 1st Defendant, the Plaintiffs shall pay the 1st Defendant half the costs of this case which shall be assessed by the court on a standard basis. This is premised on the following reasons -

the Plaintiffs’ Suit against the 1st Defendant is allowed only to the extent that RID 937 is revoked with effect from 16.3.2018 (date of

the 1st Defendant’s Counterclaim is allowed; and

the Plaintiffs shall pay costs of this case to the 2nd Defendant because the Plaintiffs’ Suit against the 2nd Defendant is dismissed and the 2nd Defendant’s Counterclaim is allowed. 52 Q. Summary of court’s decision

In summary -

a connector is an “article” within the meaning of the 1st Limb and/or 3rd Limb of the definition of “article” in s 3(1) IDA;

the Registered Features of RID 1455 do not satisfy the Eye Appeal Requirement. Even if the Registered Features have fulfilled the Eye Appeal Requirement, RID 1455 is not an “industrial design” in s 3(1) IDA because the Registered Features -

are dictated solely by the 3 Functions within the meaning of Section 3(1)(b)(i) Exclusion; and/or

are dependent upon the appearance of Article (RID 062) of which the Connector (RID 1455) is intended by the 1st Plaintiff to form an integral part with Article (RID 062) [as provided in Section 3(1)(b)(ii) Exclusion];

the 3 RID’s are not new within the meaning of s 12(1), (2)(a) and/or (b) IDA;

assuming RID 1455 is valid -

until the court revokes the registration of RID 937 pursuant to s 27(1)(a) IDA, the 1st Defendant can rely on RID 937 as a defence 53 under s 32(1) IDA against the Plaintiffs’ Suit for an infringement of

there is no evidence that the 2nd Defendant has infringed RID 1455; and

as the 3 RID’s are not new under s 12(1), (2)(a) and/or (b) IDA, the court exercises its discretion under s 27(1)(a) IDA to revoke the registration of -

RID 1455 with effect from 29.9.2011 (Priority Date for RID 1455);

RID 937 with effect from 16.3.2018 (date of Oral Decision); and

RID 227 with effect from 19.2.2013 (Priority Date for RID 227). WONG KIAN KHEONG Judge High Court (Commercial Division) Kuala Lumpur DATE: 20 SEPTEMBER 2018 54 Counsel for Plaintiffs: Mr. Ho Yuk Yuen & Ms. Esther Hor Su Ying (Messrs Y.Y. Ho & Lee) Counsel for 1st Defendant: Mr. Gary Teh Chin Yeong & Puan Siti Fairuz bt Mohd. Ali (Messrs Gary Teh & Ngiam) Counsel for 2nd Defendant: Ms. Arlene Tan Eng Guat (Messrs Arlene Tan & Co.)