*INDUSTRIAL DESIGNS ACT 1996

This Act shall apply throughout Malaysia.

Extent of application

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

A reference in this Act to an article shall be read as including a reference to—

The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the

Corporation, such number of Deputy Registrars of Industrial Designs,

Assistant Registrars of Industrial Designs and other officers as may be necessary for the proper administration of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3).

The persons holding office as Deputy Registrars, Assistant

Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant

Registrars and such other officers under subsection (2).

Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a

Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this Act appointed or authorized or required to be done or signed by the Registrar may be

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done or signed by any Deputy Registrar or Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar.

The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence.

Industrial Designs Registration Office

An Industrial Designs Registration Office and such number of branch offices of the Industrial Designs Registration Office as may be necessary for the purposes of this Act shall be established.

(Deleted by Act A1140).

(Deleted by Act A1140).

Any application or other document required or permitted to be filed at the Industrial Designs Registration Office may be filed at any branch office of the Industrial Designs Registration Office and such application or other document shall be deemed to have been filed at the

Industrial Designs Registration Office.

Register of Industrial Designs

The Registrar shall keep and maintain a register called the

Register of Industrial Designs.

There shall be entered in the Register—

The Register shall be kept in such form and on such material as may be prescribed.

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Notice of trust

The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed.

A certified true copy or extract of any entry in the Register sealed with the seal of the Registrar shall be given to any person requiring the same on payment of the prescribed fee.

Certified copies to be evidence

The Registrar may supply a copy of or an extract from—

A copy or extract so certified and sealed shall be admissible in evidence as of equal validity with the original in all courts and proceedings without further proof or production of the original.

The Registrar may certify, by writing under his hand and seal—

Where an industrial design is created in pursuance of a commission for money or money’s worth, the person commissioning the industrial design shall, subject to any contrary agreement between the parties, be treated as the original owner of the industrial design.

Where, in a case not falling within subsection (2), an industrial design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be treated as the original owner of the industrial design.

The original owner of an industrial design or the assignee of any interest in an industrial design may assign in writing to another person the whole or any part of his interest in the industrial design.

Where an industrial design, or the right to apply an industrial design to any article, becomes vested, whether by assignment, transmission or operation of law, in any person other than the original owner, either alone or jointly with the original owner, that other person or, as the case may be, the original owner and that other person shall be treated for the purposes of section 11 as the original owner of the industrial design or as the original owner of the industrial design in relation to that article.

In the case of an industrial design generated by computer in circumstances such that there is no human author, the person by whom

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the arrangements necessary for the creation of the industrial design are made shall be taken to be the author.

Right to apply and obtain registration

Where two or more persons own interests in an industrial design, all of the persons owning such interests, acting jointly, are, subject to any agreement among such persons to the contrary, entitled to make an application for the registration of the industrial design.

Registrable industrial design

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—

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—

shall be made in the prescribed form and shall be filed at the

Industrial Designs Registration Office;

shall be accompanied by the prescribed number of representations of the article to which the industrial design is applied;

shall contain a statement of novelty in respect of the industrial design to which the application relates; and

shall be accompanied by the prescribed filing fee.

Where the applicant’s ordinary residence or principal place of business is outside Malaysia, he shall appoint an agent in Malaysia upon whom notice or process relating to the application for registration of an industrial design may be served, and if the applicant fails to appoint an agent, the Registrar may refuse to proceed with the

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application until such agent has been appointed.

Multiple application

the documents mentioned in section 14 identify the applicant or applicants;

the prescribed number of representations of the article to which the industrial design is applied is filed at the

Industrial Designs Registration Office; and

the prescribed filing fee is paid.

Priority date and right of priority under treaty or convention

An application may, pursuant to any international treaty or convention to which Malaysia is party, contain a declaration claiming the priority of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any state party to the said treaty or convention; and in any such case, the priority date shall be the earliest date on which such earlier national, regional or international applications were filed:

Provided that the application made under this Act has been filed within six months from such earliest date.

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Where the application contains a declaration under subsection (2), the Registrar may require the applicant to furnish, within the prescribed time, a copy of the earlier application certified as correct by the office with which it was filed.

The effect of the declaration referred to in subsection (2)

shall be as provided in the treaty or convention referred to in that subsection.

Where any of the requirements of this section or any regulations pertaining thereto have not been complied with, the declaration referred to in subsection (2) shall be deemed to be invalid.

Withdrawal of application

An amendment under subsection (1) shall not be made if, as a result of the amendment, the scope of the application would be increased by the inclusion of any matter that was not in substance disclosed in the application initially filed.

Division of application after amendment

A divisional application shall be entitled to the priority date of the initial application.

Examination

Where, as a result of the examination, it is determined that the application does not meet the formal requirements the Registrar shall notify the applicant and give him an opportunity to make observations on such finding and to amend the application within a specified period so as to comply with those requirements.

If, within the specified period, the applicant fails to satisfy the

Registrar that the formal requirements have been complied with, or to amend the application so as to comply with them, the Registrar may refuse to register the industrial design.

The Registrar shall not refuse to register an industrial design under subsection (3) until the applicant has been given an opportunity to be heard.

In this section, “formal requirements” means the requirements of this Act and of any regulations made under this Act which are designated by such regulations as formal requirements for the purposes of this Act.

Registration and publication

register the industrial design by recording the prescribed particulars in the Register; and

issue to the applicant a certificate of registration of the industrial design in the prescribed form.

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As soon as possible thereafter, the Registrar shall cause to be published in the Gazette—

The certificate of registration shall be prima facie evidence of the facts stated therein and of the validity of the registration.

Registration of the same industrial design in respect of other articles

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.

The period of registration of an industrial design registered by virtue of this section shall not extend beyond the period of registration of the original registered industrial design and any extended period thereof.

Rectification of Register

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;

the Court may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the Register;

in case of fraud in the registration, assignment or transmission of a registered industrial design or if in his opinion it is in the public interest to do so, the Registrar may himself apply to the Court under this section;

an order of the Court rectifying the Register shall direct that notice of the order be served on the Registrar in the prescribed manner and the Registrar shall upon receipt of the notice rectify the Register accordingly.

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.

Any application for the rectification of the Register, which under subsection (1) is to be made to the Court and where the applicant is other than the Registrar himself, may, at the option of the applicant, be made in the first instance to the Registrar except where an action concerning the industrial design in question is pending.

The Registrar may at any stage of any application for rectification of the Register made to him refer any such application to the Court, or he may, after hearing the applicant in any such application and the owner as well where the applicant is a person other than the owner of the registered industrial design, determine the question between them.

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The period of registration of an industrial design may be extended for two further consecutive terms of five years each, if an application for extension is made in the prescribed form, and the prescribed extension fee is paid before the expiration of the current term.

A period of grace of six months from the date on which any unpaid extension fee was due shall be granted for the payment of such extension fee, subject to the payment of such surcharge as may be prescribed.

Where an application for extension is not made or an extension fee is not paid in accordance with this section, the registration shall lapse, and a notice of lapse of the registration shall be published in the Gazette.

Restoration of lapsed registration

filing a request for restoration in the prescribed form;

payment of any outstanding extension fee and a prescribed surcharge for restoration; and

filing a statement setting out the circumstances that led to the failure to extend the registration of the industrial design.

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Where the Registrar is satisfied that the failure to extend the registration was due to an accident or mistake, he may publish in the

Gazette a notice of intention to restore the lapsed registration.

Any interested person may, within three months from the date of such publication, give notice to the Registrar of opposition to the restoration of the registration and shall serve a copy of the notice on the applicant for restoration.

Where no notice of opposition is given in accordance with subsection (3) within the period of three months following the date of the publication referred to in subsection (2), the Registrar shall restore the registration of the industrial design, which shall have effect as if that registration had not lapsed, and he shall publish a notice in the

Gazette that the registration has been so restored.

Where a notice of opposition is given in accordance with subsection (3), the Registrar shall, after giving the opponent and the applicant for restoration an opportunity to be heard, decide the matter, and where he decides to restore the registration, the registration shall have effect as if it had not lapsed, and he shall publish a notice in the

Gazette that the registration has been so restored.

Actions or proceedings shall not be taken in respect of an infringement of the registered industrial design committed between the date on which the registration of the industrial design ceased to be in force and the date of the publication in the Gazette of the restoration of the industrial design.

Any person aggrieved by the Registrar’s decision on the grant or refusal of restoration under this section may appeal to the Court.

Revocation of registration and grant of compulsory licence

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;

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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.

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 revocation of the registration of an industrial design on any other ground as he thinks fit.

Order of Court

Subject to this Act, the laws applicable to ownership and devolution of personal property shall apply in relation to a registered design as they would apply in relation to other choses in action.

An assignment referred to in subsection (1) shall be in writing.

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Registration of assignment, transmission or other operation of law

No assignment, transmission or other operation of law in respect of a registered industrial design shall have effect against third parties unless recorded in the Register.

Joint ownership

Where two or more persons are joint owners of a registered industrial design, then, subject to this section and to any agreement between them to the contrary—

Where two or more persons are joint owners of a registered industrial design, then, subject to any agreement between them to the contrary, none of them shall without the consent of the other or others grant a licence with respect to the use of the registered industrial design, or assign or mortgage his interest in the registered industrial design.

The provisions of this section shall have effect in relation to a right to apply for the registration an industrial design as they have

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effect in relation to a registered industrial design, and references to a registered industrial design shall include references to a right to apply for the registration of an industrial design.

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:

Notwithstanding subsection (1), the right of the owner of a registered industrial design shall not extend to acts in respect of an article to which the registered industrial design is applied by or with the consent of the owner after the article has been lawfully imported into or sold in Malaysia.

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Infringement proceedings

The owner of a registered industrial design shall have the same right against any person who has performed acts which make it likely that an infringement will occur.

The proceedings mentioned in subsections (1) and (2) may not be instituted after five years from the act of infringement.

For the purposes of this section, “owner of a registered industrial design” means the registered owner and includes an assignee, a licensee or the beneficiary of a compulsory licence granted under section 27; but if any proceedings are instituted by a person other than the registered owner, it must be proved that that person had made a prior request to the registered owner to institute proceedings for the infringement complained of by him and that the registered owner had refused or failed to institute the proceedings within three months from the receipt of the request, without prejudice however to the registered owner’s right to join in such proceedings.

Defence in action for infringement

If the owner of a registered industrial design proves that acts

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are being performed which make it likely that an infringement will occur, that Court may grant an injunction to prevent infringement and any other legal remedies.

The Court may refuse to award damages, or to make an order for an account of profits, in respect of an infringement, if the defendant satisfies the Court—

makes or causes to be made a false entry in the Register;

makes or causes to be made a false entry in any certified copy of a document or publication in the Industrial Designs

Registration Office;

makes or causes to be made a false document purporting to be a copy of an entry in the Register;

produces or tenders or causes to be produced or tendered in evidence any document mentioned in paragraph (b) or (c)

knowing such document or any entry therein to be false;

or

falsely makes a claim that he is the owner of the registered industrial design or represents that he is acting in the capacity of, or on behalf of the owner of the registered industrial design, shall be guilty of an offence and is liable on conviction to a fine not

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exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

False representation of registration

For the purposes of subsection (1), a person who for value disposes of any article having stamped, engraved or impressed thereon or otherwise applied thereto the words “registered industrial design” or any other word or words expressing or implying that the article is one to which a registered industrial design has been applied, shall be taken to represent that the article is one protected by an industrial design registration.

Subsection (1) does not apply where the representation is made in respect of an industrial design after the registration in respect of that industrial design has expired or been revoked and before the end of a period which is reasonably sufficient to enable that person to take steps to ensure that the representation is not made or does not continue to be made.

In proceedings for an offence under this section, it shall be a defence for any person to prove that he used due diligence to prevent the commission of the offence.

This section shall have effect in relation to a right to apply for the registration of an industrial design as they have effect in relation to a registered industrial design, and references to a registered industrial design shall include references to a right to apply for the registration of an industrial design.

Use of title “Industrial Designs Registration Office”

Where the affairs of a body corporate are managed by its members, subsection (1) shall apply in relation to the acts and defaults of a member in connection with his functions of management as if he were a director of the body corporate.

The request for amendment shall be accompanied by the prescribed fee.

Except for the purpose of correcting a clerical error or an obvious mistake, no amendment shall be permitted under this section if the amendment would have the effect of disclosing matters which extend beyond that disclosed before the amendment, or extending the

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protection conferred at the time of registration of the industrial design in question.

No amendment shall be allowed to be made in the registration of an industrial design under this section where there are pending before the court proceedings in which the validity of the registration of the industrial design may be put in issue.

Where the Register has been amended under this section, the

Registrar may require the certificate of registration to be submitted to him and may cancel the certificate of registration and issue a new certificate of registration with such consequential amendments as are rendered necessary by the amendment of the Register.

General powers of Registrar

summon witnesses;

receive evidence on oath;

require the production of any document or article; and

award costs as against a party to any proceedings before him.

Any person who without any lawful excuse fails to comply with any summons, order or direction made by the Registrar under paragraph (1)(a), (1)(b) or (1)(c) commits an offence and is liable on conviction to a fine not exceeding two thousand ringgit or to imprisonment for a term not exceeding six months or to both.

Costs awarded by the Registrar may in default of payment be recovered in a court of competent jurisdiction by the person to whom the costs were awarded.

Exercise of discretionary power

The Registrar shall not be bound to recognize such agent who has been convicted of crimes involving fraud or dishonesty, or is an undischarged bankrupt or had been struck off or otherwise removed from the register of membership of any professional body, or suspended for the time being from practising by any such body or committee thereof.

Appeal

The same rules of procedure on appeal shall apply to appeals made under subsection (1) as to appeals to the High Court from a decision of a subordinate court in civil matters.

Regulations

In particular and without prejudice to the generality of subsection

, regulations made under this section may provide for all or any of the following: