Suan Leong Hang (M) Sdn Bhd v 1. Goh Leong Woi (BA-24NCVC-174-10/2019)

GOH LEONG WOI

TEOH GAIK LAN (NO. K/P : 621018-07-5548) …DEFENDANTS GROUNDS OF JUDGMENT (Enclosure 1) A. INTRODUCTION [1] The Plaintiff in its Originating Summons (Enclosure 1) sought inter alia for the following order : 3 i. An order for the registered Industrial Design Nos. MY 12- 01260-0101, MY 13-01869-0101 and MY 13-01870-0101 in the name of the First Defendant and/or Second Defendant and/or Defendants be revoked immediately and expunged from the Registry’s Record Industrial Designs, Malaysia which is stored in a relevant government registrations or government corporations in Malaysia; ii. A copy of the sealed order shall be served on the Registrar of the Industrial Design pursuant to section 24 (1) (d) of the Industrial Design Act 1996 and the registration record of Industrial Design shall be altered, amended, revoked and/or updated and/or fixed by revoking or expunging the registered Industrial Design Nos. MY 12-01260-0101, MY 13-01869-0101 and MY 13-01870-0101 in the name of the First Defendant and/or Second Defendant and/or Defendants from the Registry’s Record Industrial Design in Malaysia and subsequently the cancellation is published in the gazettes and/or relevant government gazette. [2] This Court had earlier dismissed the Defendants’ application in Enclosure 6 to convert Enclosure 1 to a writ action pursuant to 4 Order 28 Rule 8 of the Rules of Court 2012. In dismissing the Defendants’ Enclosure 6, the Court has also ordered the Defendants to pay the Plaintiff RM4000 in costs. B. BACKGROUND FACTS [3] The background facts which have led to the filing of Enclosure 1 by the Plaintiff are as follows:

3.1 The Plaintiff is a company running its business under the name of Suan Leong Hang (M) Sdn Bhd). The Plaintiff is involved in the business of designing, manufacturing, and distributing Chinese prayer products since 2000.

3.2 The Defendants (i. Goh Leong Woi ii. Teoh Gaik Lan) in the present case are husband and wife. This husband and wife team is also involved in the business of praying materials and paper products. 5

3.3 The subject matter of this present case relates to six industrial designs (IDs) in respect of prayer products which had been registered with the Registrar of Industrial Designs, Malaysia wherein three IDs were registered by the Plaintiff and the other three were by the Defendants.

3.4 The three IDs registered by the Plaintiff are as follows: a) Incense Stick (Registration No.MY 12-01337-0101) - Date of registration is on 25.9.2012. b) Pineapple Lamp (Registration No.MY 07-00576-0101) - Date of registration is on 24.4.2007. c) Gold Bar Lamp (Registration No.MY 07-01549-0102) - Date of registration is on 18.10.2007.

3.5 Since the registration of the Plaintiff’s IDs namely; in 2007 and 2012 respectively, the Plaintiff has manufactured, assembled, provided and distributed product based on its IDs extensively in Malaysia and outside Malaysia. 6

3.6 However in 2016, the Plaintiff claimed that it discovered that the Defendants had also registered their IDs in respect of the similar poducts which are as follows: a) Joss Stick (Registration No.MY 12-01260-0101) - Date of registration is on 12.9.2012. b) Pineapple Lamp (Registration No.MY 13-01869-0101) - Date of registration is on 24.12.2013. c) Gold Bar Lamp (Registration No.MY 13-01870-0101) - Date of registration is on 24.12.2013.

3.7 The Plaintif had alleged that the Defendants’ IDs are indentical to and/or a fraudulent or obvious imitation of its IDs that were registered very much earlier.

3.8 On the premise of protecting its exclusive rights over its registered industrial designs, the Plaintiff had commenced this action (Enclosure 1) against the Defendants seeking for an order that the Defendants’ IDs be revoked and/or 7 expunged pursuant to section 27 of the Industrial Designs Act 1966 (ID Act).

3.9 The Plaintiff’s application was strenously opposed by the Defendants and the Defendants are counter claiming for the following reliefs: a) An order that the Industrial Design MY 12-01337-0101, MY 07-00576-0101, and MY 07-01549-0102 all registered under the name of the Plaintiff be expunged or revoked immediately form the register and/or records of the (ID) Registration Office and its branch office; b) An order to rectify and/or vary the statement of novelty of the Defendants’ Industrial Design MY 07-00576-0101, MY 07-01549-0102 to “The novelty of the design resides in the pattern and ornamentation applied to the article as shown in the representations”; c) Alternative to (a) and (b), an order that the Industrial Design MY 12-01337-0101, MY 07-00576, and MY 07- 8 01549-0102 all registered under the name of the Plaintiff and the Industrial Design MY 07-00576-0101, MY 07- 01549-0102 all registered under the Defendants’ name be expunged or revoked immediately from the register and/or records of the Industrial Design Registration Office and it branch office; d) An injunction to restrain the Plaintiff from infringing the Defendants’ Industrial Design MY 12-01337-0101 and/or any Industrial Design which is substantially similar to the Defendants’ Industrial Design MY 12-01337-0101 in the course of trade; e) An order for delivery up within 7 days form the date of Judgment, all infringing reproductions of the Defendants’ Industrial Design MY 12-01337-0101, all documents and records connected to the manufacture, storage, supply, distribution, sale, offer for sale or disposal of the infringing reproductions of the Defendants’ Industrial Design MY-12-01337-0101; and f) Damages to be assessed for the infringement againts the Defendants’ Industrial Design MY 12-01337-0101. 9 C. RELEVANT PROVISIONS PERTAINING TO THE REGISTRATION OF INDUSTRIAL DESIGNS AND THE LEGAL PRINCIPLES GOVERNING ITS REGISTRATION / REVOCATION OF SUCH REGISTRATION. [4] In the present case, it is not in dispute that both the Plaintiff and the Defendants had their IDs registered with the Registrar of Industrial Designs Malaysia under the ID Act. [5] The Plaintiff’s Incense Stick was registered thirteen days after the Defendants’ Joss Stick was registered. While the Plaintiff’s Pineapple Lamp and the Gold Bar Lamp were registered six years earlier before the Defendants’ Pineapple Lamp and the Gold Bar Lamp were registered. [6] Before this Court proceeds to determine the merits of both the Plaintiff’s and the Defendants’ case, it is only apt for this Court to set out the relevant provisions under the ID Act pertaining to the registration of industrial designs in Malaysia as well as the 10 the legal principles governing its registration and revocation of such registration. [7] Now, what is exactly “industrial design”? Section 3(1) of the ID Act set out the definition of “industrial design” as follows: “Industrial designs” 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 11 [8] The ID Act provides an avenue for the registration of industrial designs in the Register of Industrial Designs kept under the Act. It is provided under its section 12 that: “12. 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 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; 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 12 registration granted on the basis of that order application.” [9] What constitutes new and/or novel industrial design under section 12 of the ID Act has been discussed and decided in several case authorities. Suffice for this Court to cite a few. i. In the case of F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products, Inc And Other Appeals (2013) MLJU, the Court of Appeal at paragraphs [21], [22], [23], [24] and [25] of its judgment had stated as follows: “[21] An industrial design can only be registered and enjoy the protection under the IDA 1996 if it satisfies the two - fold requirements under section 12 of the IDA 1996 i.e. it must be new or novel (section 12(1)) and it is an “industrial design” as defined under section 3(1) of the IDA 1996. A design which fails to fulfill these requirements is clearly not registrable under the IDA 1996 and cannot qualify for any protection under the Act. [22] Section 12 of the IDA 1996 provides: 13 “12. 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 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; 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 order application. ” 14 [23] Reading both the provisions of section 12(1) together with section 12(2)(a) of the Act, the clear conclusion one can arrive at is this: if there is a disclosure or publication in Malaysia of an industrial design which is similar or substantially similar or differs only in immaterial details or in features commonly used in the relevant trade prior to the priority date of the Respondent’s 624 Design, then the Respondent’s 624 Design would be rendered invalid for registration under the Act. Definition of “industrial design” Section 3(1) of the IDA 1996 [24] First and foremost, a registrable industrial design under the IDA 1996, particularly section 12, specifically refers to an “industrial design” as defined under section 3(1) of the IDA. [25] Section 3(1) of the IDA defines an “industrial design” as “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- 15

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. ” ii. Hamid Sultan Abu Backer JC (as he then was) in the case of Buncho (M) Sdn Bhd v Q-Stationers Sdn Bhd

7 CLJ 359, has held inter alia: “[6] ….

An industrial design cannot be registered unless it is new and it shall not be considered as new if, before the priority date of its application, it or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade: 16

Has already been disclosed to the public anywhere in Malaysia; and Public disclosure would cover all actions of sales, use, publication, publicity, exhibiting or such similar activities (see s. 12(1) and (2)(a) of IDA 1996);

A registered industrial design is valid for an initial term of five years computed as of its filing date and may be extended up to a maximum of fifteen years at five yearly intervals (see s. 25 of IDA 1996); ……

An industrial design is not new if before its priority date, it or an industrial design differing from it only in immaterial respects was disclosed to the Malaysian public (see s. 12(2) of IDA 1996). iii. In the case of Three V Marketing Sdn Bhd v Heng

(ID)(Interested Party) the court held that: 17 “[21] Now, there are two ways in which the requirements of s. 12(2)(a) of the Act for "disclosure to the public anywhere in Malaysia" are fulfilled and they are namely: (i) by prior use of the design, by selling or displaying to the public an article to which the design has been applied; and (ii) by prior publication in documents. [22] I find it useful to reproduce the principles as summarized in Russell-Clarke and Howe on Industrial Design (7th edn): “Prior publication of a design by prior use can be said to take place when the design has been applied to articles, and those articles have been used in such a way that the design becomes disclosed to the public before the date of application for registration of the design in suit. It should be noted that it is sufficient if the design is used on any kind of article, and it need not be the same article, or even in the same category, as the article in respect of which the design is registered or sought to be registered. In general there will be publication if articles to which the design is applied are manufactured, displayed or 18 used in such a way that members of the public will or might see them. It is not necessary that the articles should been sold. Prior use thus means not use by the public, but use in public as opposed to use in private”. [10] Section 17 (1) of the ID Act defines priority date as follows: “(1) Subject to this section, the priority date of an application for the registration of an industrial design is the filing date of the application.” [11] Be that as it may, section 27 of the ID Act confers the Court the power to revoke registration of industrial design. The power conferred under section 27 of the ID Act reads as follows: “Revocation of registration and grant of compulsory licence 27.

At any time after the registration of an industrial design, any person may apply to the Court-

for the revocation of the registration of the industrial design on the ground, subject to section 12, that the industrial design has been 19 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; or

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.

The provisions of paragraphs (1)(a) and (1)(b) shall be without prejudice to the right of the owner of an industrial design to request the Registrar for the revocation of a registered industrial design of which he is owner, or to the power of the Registrar to order the 20 revocation of the registration of an industrial design on any other ground as he thinks fit.’’ [12] In relation to revocation of registration of industrial design, Regulation 27 and 28 of (ID) Regulation 1999 are also relevant. [13] Regulation 27 of (ID) Regulation 1999 provides as follows: “(1) An application to the Registrar for rectification of the Register pursuant to subsection 24(3) or a request for revocation of registration of the industrial design under subsection 27(2) shall be made on ID Form 6 accompanied by the prescribed fee and a statement setting out fully the applicant's interest and the facts upon which he relies.

Where the applicant is other than the owner of the industrial design, a copy of the application and the statement referred to in subregulation (1) shall be given to the owner.

If the owner desires to oppose the application for rectification of the Register or revocation of registration of the industrial design he shall within three months from the date of receipt of the application file a notice of opposition which shall include a statement of the grounds upon which the owner objects to the application and shall give a copy to the applicant. 21

An owner who does not file a notice of opposition shall be deemed to have no objection.

Within two months from the date of receipt of the notice of opposition filed in accordance with subregulation (3), the applicant may file a counter-statement setting out the grounds on which he relies as supporting his application and the facts, if any, alleged in the notice of opposition which he admits, and shall at the same time give a copy to the owner.

If no counter-statement is filed in accordance with subregulation (5), the application shall be deemed abandoned.

If a counter-statement is filed in accordance with subregulation (5), the Registrar shall, after giving the owner and the applicant an opportunity to be heard by filing in written submissions within a specified time, decide on the matter. [14] While Regulation 28 reads as follows:

An application to the Court under paragraph 24(1)(a), subsection 24(3) or paragraph 27(1)(a), (b) or (c) may be made by originating summons.

…….. 22

……..

……..

was disclosed to the public anywhere in Malaysia; 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 order application. ” [15] With regards to Court’s power to revoke or expunge registration of industrial design under section 27 of the ID Act, Hamid Sultan Abu Backer JC in the case of Buncho had inter alia stated the following: [6] …. 23

At any time after the registration of an industrial design, any person may apply to the court:

For the revocation of the registration of the industrial design, on the ground that the industrial design has been disclosed to the public prior to the priority date of the application for registration of the industrial design (see s. 27(1)(a) of IDA 1996); or

(ii) For the cancellation of the registered industrial design on the ground that the registration of the industrial design has been procured by unlawful means (see s. 27(1)(b) of IDA 1996);

The Registrar of Industrial Design must be notified of any revocation proceeding by filing with him Form ID7 (see s. 27(2) of IDA 1996);

The owner of a registered 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 24 which the registered industrial design has been applied (see s. 32(1) of IDA 1996);

A person infringes the rights conferred by the registration of an industrial design if he, without the license or consent of the owner of the industrial design, does any of the following things while the registration is still in force (see s.32(2) of IDA 1996):

Applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered (see s. 32(2)(a) of IDA 1996); and

(ii) Sells, or offers or keeps for sale, or hire, or offers or keeps for hire, any of the [infringing] articles (see s. 32(2)(c) of IDA 1996);

The owner of a registered industrial design shall have the right to institute legal proceedings against any person who has infringed or is infringing any of the rights conferred by the registration of the industrial design. A similar right is available against any person who has performed acts that make it likely that an infringement will occur (see s. 33(1) and (2) of IDA 1996); 25

The (ID) Act 1996 says that the industrial design must be new. A design only needs to be new in Malaysia as its priority date to qualify for registration (see s. 12 of IDA 1996);

An industrial design is not new if before its priority date, it or an industrial design differing from it only in immaterial respects was disclosed to the Malaysian public (see s. 12(2) of IDA 1996).

In the High Court case of Golden Cresent Trading Sdn Bhd v. Alpine Auto Access Sdn Bhd; Pendaftar Rekabentuk Perindustrian (Interested Party) [2008] 9 CLJ 317, Ramly J (as he then was) stated this at p. 325, para. 25: Under section 12 of the IDA, an industrial design shall not be registered unless it is new. An industrial design shall not be considered to be new if before the priority date of [its] application for registration, 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. 26

The learned judge in the same case further elaborated on what amounts to publication. At p. 325, para. 26, he made reference to the unreported case of Teh Teik Boay v. Chuah Siak Loo [1961] 1 LNS 136 where Hepworth J said the following: Broadly speaking, there is publication if the design has been disclosed to the public as opposed to being kept secret. The question which has to be decided is, therefore, has the public been put in possession of the design? Has it knowledge of the design? It is not necessary that the design should have been actually used. There will just as much be a publication if it is shown that it was known to the public, without ever having been actually out to use. Thus, publication may be of two types, (a) publication in prior documents; (b) publication by prior user.

The definition of 'prior use' by Russell-Clarke was adopted by Besalon International Limited & Ors v. South Strong Industries Sdn Bhd [1997] 1 CLJ Supp 335 where the learned judge said the following: Prior use according to Russell-Clarke (page 50): 27 Occurs where the design has been actually applied to articles before the date of registration of the design, and those articles have been used in such a way that the design becomes disclosed to the public.” [16] Hence, an industrial design which has been registered under the ID Act can only seek protection under the Act if the requirements set out under section 12 of the Act are satisfied. This position has been clearly envisaged in the decided cases which this Court had mentioned earlier. D. ISSUES FOR DETERMINATION THE PLAINTIFF’S IDs VERSUS THE DEFENDANTS’ IDs [17] The Plaintiff in its attempt to have the registration of the Defendants’ IDs expunged /revoked had alleged the followings:

the Defendants’ IDs are identical to and/or a fraudulent or obvious imitation of the Plaintiff’s Industrial Designs. 28

(ii) any differences between the Plaintiff’s IDs and the Defendants’ IDs are merely immaterial details or features commonly used in the relevant trade.

(iii) the Chinese Character that has been referred by the Defendants in the Pineapple and Gold Bar Lamp are completely irrelevant and that those characters are clearly not a valid subject matter to be protected as registered Industrial Designs.

(iv) the Defendants’ IDs were not new at the material times because of the registrations and the sale of products of the Plaintiff’s IDs were done much earlier than Defendants since 2007 and 2012 respectively whereas the Defendants’ IDs registered on 2012 and 2013.

the novelty of Plaintiff’s Incense Stick resides in the three dimensional Chinese Coin shape embossed out of the surface linking each other to make up the spiral design around the upper portion of Plaintiff’s Incense Stick and the resultant shape and configuration of Plaintiff’s Incense Stick as a whole. 29

(vi) the Defendants had no right to apply for the registration of the Defendants’ IDs because they were not the original owners of the aforesaid industrial designs. [18] On other hand, the Defendants in defending their IDs and in attempting to invalidate the Plaintiff’s IDs had contended the following: a) the Plaintiff started to sell products based on the Plaintiff’s Designs and/or similar designs before the Plaintiff registered the Plaintiff’s Designs. b) the Defendants have produced and sold products based on the Defendants’ Designs without infringing the Plaintiff’s Designs. c) in respect of the Plaintiff’s Incense Stick and Defendants’ Joss Stick, the Certificates of Registration shows that the Defendants’ Joss Stick has been registered on 12.9.2012 prior to the Plaintiff’s Incense Stick wherein the Plaintiff’s Incense Stick was only registered on 25.9.2012. 30 d) the novelty claimed in the Defendants’ registration of Joss Stick is different from the novelty claimed in the Plaintiff’s registration of Incense Stick. e) the Plaintiff’s Incense Stick cannot be new as the shape and configuration has been widely used in the public. f) the Plaintiff’s Pineapple and Gold Bar Lamps are not new as lamps in the same shape and/or similar design have been sold by others manufacturers in the same the industry to the public prior to the date of application of the Plaintiff’s Pineapple and Gold Bar Lamp. g) the Plaintiff’s Pineapple Lamp and Gold Bar Lamp no additional features, pattern and/or ornamentation be added. h) on the other hand, the Defendants’ Pineapple and Gold Bar Lamp have been added with 2D gold bar engraved with Chinese character “zao cai jing bao” (the meaning being bringing in wealth and treasure) and the red candle also be engraved with Chinese characters “cai yuan guang jing” (the meaning being may wealth come generously to you). 31 i) the additional features in the Defendants’ Pineapple and Gold Bar Lamps have made the Defendants’ Designs appear to be distinct in the eyes of the Chinese community as Chinese have strong affection for these suspicious words. j) by an affidavit affirmed by one Leong Wing Fui, he has stated that his company Soon Fatt Hung Enterprise Sdn Bhd (“SFH”) has been selling lamps identical to the Plaintiff’s Pineapple and Gold Bar Lamps prior to the Plaintiff’s Pineapple and Gold Bar Lamp’s priority date. [19] In the present case, in view of the allegations and the counter allegations by the Plaintiffs and the Defendants against each other’s IDs, the primary grounds on which both the Plaintiff and Defendants sought to revoke each other party IDs are these: i. the designs were not new as at the priority date; ii. the designs were not new because there has already been prior disclosure of such designs to the public; 32 iii. the Defendants’ IDs is a fraudulent or obvious imitation of the Plaintiff’s IDs iv. any difference in the designs are merely immaterial details or features commonly used in the relevant trade E. THE COURT”S DECISION Novelty/New The Plaintiff’s Insence Stick v the Defendants’ Joss Stick [20] For ease of reference, this Court has set out below the two IDs of the Plaintiff and the Defendants with regard to the joss stick / incense sticks. Plaintiff’s Industrial Design Defendants’ Industrial Design Representation Representation Incense stick Reg. Date: 25 September 2007 Incense stick Reg. Date: 12 September 2012 33 [21] It was the contention of the Defendants that their joss stick’s IDs was registered on 12.9.2012 which was thirteen days earlier from the registration of the Plaintiff’s incense stick. Hence, the priority date of the the Defendants’ joss stick is 12.9.2012. [22] It was also contended by the Defendants that the Plaintiff’s incense stick is neither a new design nor is new in shape as such design and shape have been commonly used in trade as the design for joss sticks and incense sticks. The Defendants further contended that such design can be seen for hundreds if not thousand years in praying materials in Chinese temple or ceremony. [23] The counsel for the Defendants had urged this Court to take judicial notice that joss sticks have existed long time ago in the market prior to the Plaintiff’s registration of its incense stick on 25.9.2012. 34 [24] The Plaintiff on the contrary had contended that even though the Defendants’ joss stick was registered prior to its incense stick, the Plaintiff has been selling the incense stick prior to the prority date of the Defendants’ joss stick. To prove its contention, the Plaintiff has adduced evidence in Exhibit “P-6” (Enclosure 7) namely; invoices issued by the Plaintiff dated 11.9.2012. [25] Now, although the invoices were issued one day before the Defendant’s priority date, this Court is in agreement with the counsel for the Plaintiff that P6 is sufficient evidence to prove that the Plaintiff has been selling and distributing its own incense stick while applying its registered IDs in Malaysia prior to the Defendants’ registration date of their joss stick. [26] On the contention by the Defendants that there is no novelty in the Plaintiff’s incense stick as joss sticks have been used as praying product from time in memorial, this Court must emphasize here that the incense sticks produced by the Plaintiff is not the normal and ordinary joss stick which have been used 35 from time in memorial. It is this Court’s judgment that the incense sticks produced and manufactured by the Plaintiff is entirely different from the normal joss sticks used for praying. [27] The novelty in the Plaintiff’s incense stick lies in its shape and configuration of the design of the joss stick. This can be seen in Exhibit “P-2” (Enclosure 2) where in the Statement of Novelty appearing in the MYIPO’s gazette Batch 14/2013 October 21,

The statement of novelty in respect of the incense stick is this: The Novelty of the design in the features of shape and configuration of the article as shown in the representations. It can be clearly seen that the article covers not only the long stick shape but also the Chinese Traditional Coin form figure “1.4 REFERENCE VIEW” as the “shape and configuration of the article”. [28] The Defendants on the other hand, had claimed novelty in their Joss Stick in the feature namely; in the pattern of Chinese coins spiraling around the stick. 36 [29] This Court agrees with the counsel for the Plaintiff that images of Chinese coins (which is a sign of prosperity within the Chinese community) are images which are commonly used in the trade as well as on Chinese prayer products. [30] Hence, this Court is of the view that the Plaintiff’s Incense Stick has satisfied the requirements envisaged under section 12 of the ID Act and protection under the ID Act must be accordingly accorded to the Plaintiff in respect of its IDs. [31] In view of the finding above, an order revoking or expunging the Defendants’ IDs in respect of the joss stick is inevitable for lack of novelty. The Plaintiff’s Pineapple and Gold Bar Lamps v the Defendants’ Pineapple and Gold Bar Lamps [32] This Court must emphasise here that it cannot be disputed that the Plaintiff’s Pineapple and Gold Bar Lamps were filed and were registered in 2007, which is at least six years earlier than 37 the Defendants‘s registration of their Pineapple and Gold Bar Lamps i.e in 2013. Here, it is crystal clear that prior to the Defendants’ registration of their Pineapple and Gold Bar Lamp there has already been disclosure of similar IDs to the public. [33] It is pertinent to be highlighted that in the Defendants’ attempt to discredit the Plaintiff’s novelty in its Pineapple and Gold Bar Lamp, the Defendants had contended that there are prior disclosures of the IDs prior to the application date of the Plaintiff’s Registered IDs. [34] To this contention, the Defendants had furnished an affidavit affirmed by a person by the name of Leong Wing Fui (Enclosure 4). Leong Wing Fun (Leong) had claimed that he runs a business under the name of Soon Fatt Hung Enterprise Sdn Bhd (Soong Fatt Hung). Leong in his affidavit had averred that Soon Fatt Hung’s business is producing and selling Chinese praying material including prayer lamps. According to Leong, Soon Fatt Hung had started producing Pineaple and Gold Bar Lamp since year 2006. Leong had alleged that the 38 Plaintiff had used its Gold Bar prayer lamp in the Plaintiff’s catalogue printed in year 2007. [35] In support of this allegation, Leong has enclosed in his affidavit the following exhibits: i. purported photos of his Gold Bar Prayer Lamp and Pineapple Prayer Lamp (Exhibit “LWF-1”); ii invoices that he had issued to his customers for sale in July and August 2007 Lamp (Exhibit “LWF-1”); iii. the receipt issued by Tai Chin Plastic Moulding Factoring who purportedly made the mould for his Pineapple Prayer Lamp and Gold Bar Prayer Lamp at his request in the year 2006 (Exhibit “LWF-1”); iv. the design of his packaging from the printing company in July 2007 (Exhibit “LWF-1”); v. the Plaintiff’s catalogue printed in year 2007 using his Gold Bar prayer lamp (Exhibit “LWF-2”) [36] With greatest respect, this Court agrees with the counsel for the Plaintiff that Leong’s affidavit did not carry any weight and 39 was no aid to the Defendants’ case. This Court finds so on the following reasons: i. firstly; the photographs are undated. ii. secondly; the invoices and receipts issued are not accompanied by pictures and/ or other documents which show that the items in relation to them are substantially similar to Plaintff’s Pineapple Lamp, in particular invoices issued by Soon Fatt Hung were all dated after Plaintiff’s Pineapple Lamp’s registration date. iii. thirdly; all the documents exhibited in Exhibit “LWF- 1” by Leong in his affidavit do not in any manner show any of the design were Leong’s lamps nor does it show that there was prior disclosure of his (Leong) lamps to the public. 40 iv. fourthly; Exhibit “LWF-2” does not in any manner show that the catalogue was actually printed in 2007. v. finally; this Court must also be mindful of the undisputed fact that Soon Fatt Hung Enterprise Sdn Bhd has a track record of infringing the Plaintiff’s intellectual property rights. The Plaintiff had in fact on 3.6.2013 obtained a judgment in the High Court of Ipoh against Soon Fatt namely; an injunction order restraining Soon Fatt Hung from infringing one of the Plaintiff’s other registered IDs. [37] For both the pineapple and the gold lamps, since the Plaintiff’s registrations of its designs were undisputably very much earlier than the the Defendants, then the question to be determine by this Court is whether the appearances of the Defendants’ pineapple and gold lamps are substantially the same as the Plaintiff’s pineapple and gold lamps. 41 [38] This Court takes note that the crux of the Plaintiff’s allegation against the Defendants apart from the Defendants’ IDs are not new or novel is that; the Defendants’ Pineaple and Gold Lamps are clearly identical and/or a fraudulent or obvious imitation of the Plaintiff’s Pineapple and Gold Bar Lamps and if there are any differences between the two, the difference in designs are merely immaterial details and/or features common to the trade. [39] The Defendants in refuting the Plaintiff’s contention had contended that the novelty claimed in the Plaintiff’s Pineapple and Gold Bar Lamps are in shape and in configuration whereas the novelty claimed in the Defendants’ Pineapple and the Gold Bar Lamps are the shape and configuration and the pattern and ornamentation applied to the article. [40] It was contended by the Defendants that their Pineapple and Gold Bar Lamps have additional features namely; the 2D gold bar artwork and Chinese characters which make the Defendants’ Designs appear to be distinct in the eyes of the 42 Chinese community as the Chinese community have strong affection for these auspicious words. [41] Thereto, the question that must be determined by this Court has been clearly stated in Russell-Clarke and Howe on Industrial Designs (7th Edn) para. 3-152 as follows: The question which has to be decided is whether the two appearances are substantially the same or not. That the eye, and the eye alone, is to be the judge of identify, and is to decide whether one design is or is not an antipacipation of another, has been consistently laid down. [42] This Court also refers to the case of Amp Incorporated v Utilux Pty Limited [1970] RPC 397 where the English Court of Appeal at page 430 has held: “There is a long line of authorities from Le May v. Welch [1883] 28 Ch.D. 24 at 34 onwards, including such a case as Allen 43 West v. British Westinghouse Electric & Manufacturing [1916] 33 RPC 157 at 165, which have laid down that to qualify as new or original a design must, when compared with the design must, when compared with the design of prior articles and other registered designs and published matter, show a substantial difference. Novelty or originality must be substantial, that is, must be present as a matter of substance, having regard to the nature of the article.” (emphasis given) [43] For clearer comparison of the four articles and its designs, this Court reproduces the pineapple and the gold lamps registered by both the Plaintiff and the Defendants in the table below: Plaintiff’s Industrial Designs Defendants’ Industrial Designs Representation Representation Gold Lamp Reg. Date: 18 October 2007 Gold Lamp Reg. Date: 24 December 2013 Pineapple Lamp Reg. Date: 24 April 2007 Pineapple Lamp Reg. Date: 24 December 2007 44 [44] Looking at the four articles and comparing the the designs of both the pineapple and the gold lamps, this Court must emphasise here without any hesitation, that the appearance of the Defendants’ pineapple and gold lamp are mostly similar and identical to the Plaintiff’s articles. [45] This Court is in agreement with the counsel for the Plaintiff that the novelty claimed by he Defendants in their articles (pineapple and gold lamps) namely; the 2D gold bar artwork and Chinese characters obviously is unsustainable. [46] It is this Court’s finding that the 2D gold bar artwork and Chinese characters in the Defendants’ IDs are clearly immaterial details and/or not substantial enough so as to confer registrability upon the design. The same immaterial details are also commonly used in the trade as the 2D gold bar artwork and Chinese characters are generic and/or common signals of properity within the Chinese community. 45 [47] Hence, undoubtedly the Defendants’ Pineapple and Gold Bar Lamps designs were not new/ novel designs within the meaning of section 12 of the (ID) Act 1996. [48] Upon the power conferred under section 27(1)(a) of (ID) Act 1996, this Court hereby revokes the registrations of the Defendants’ Pineapple and Gold Bar Lamps (IDs) and thus, the same infringing IDs are to be removed from the register. [49] In view of the aforemention deliberations, this Court hereby allows the Plaintiff’s application in Enclosure 1 and dismisses the Defendants’ counterclaim in paragraph 34 in their Affidavit in Reply (Enclosure 3) with costs. [50] This Court further orders that the Defendants pay the Plaintiff RM10,000.00 in costs. 46 t.t. ………………………………………….. (DATUK AZIMAH BINTI OMAR) Judge High Court Shah Alam Selangor Darul Ehsan Dated 14th November, 2017 Peguam Plaintif - Tetuan Chung Chambers Encik Bahari Yeow Cik Patricia Encik Ong Wei Shen Peguam Defendan -