UIP2612 Intellectual Property Law

Topic 4 : Industrial Designs

Assoc. Prof. Dr. Manique Cooray

Faculty of Law,
Multimedia University
2023
• Industrial Designs Act 1996 and
Industrial Designs Regulations 1999

Effect:
IDA has removed the requirements to obtain
British registration and introduced a local
registration system.
This saves time and cost for registration and
can thus expedite the development of the
design in Malaysia..
Introductory remarks

• Design law protects industrial designs for

appearance or visual form of articles that are
commercially produced.

• It is the ornamental or aesthetic aspect of a

useful article. Such aspects may depend on the
shape, pattern or colour of the article.
However, design law does not protect functional
designs such as machinery, computer terminals
and other articles based on their function.

It is only concerned with the visual appearance of

an article and not the article itself.
i. A new shape for a new portable computer
ii. A desk for computer
 Should industrial design be registered?

A Design will not be protected unless it is

registered. In order to qualify for registration,
certain requirements need to be satisfied:

i) It must come within the interpretation of an

“industrial design” in sec 3(1) of the Industrial
Design Act 1996;
ii) It must be new- (sec 12(1) of the Act);
iii) It shall not be contrary to public order or
morality- (sec 13 of the Act)
• Provisions under the Industrial Designs Act
1996/ Arrangement of IDA

• General (Parts I and II)

• Application Procedures (Part III)
• Post Registration (Parts IV, V, VI)
• Core Provisions (Various Sections)
• Miscellaneous (Parts VII, VIII,IX)
*** Students are required to refer to the
statute books for specific provisions as
only the summary of the provisions are
included in this lecture.
Core Provisions
Requirement 1: Section 3 (1)
Interpretation of ID
➢ “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) A method or principle of construction; or
(b) Features of shape or configuration of an article which
are:-
(i) Dictated solely by function
(ii) Dependent upon the appearance of another article
of which the article is intended to form an integral part.
• Elaboration of Requirement 1
“Features”
“Shape”: “External form or appearance,
characteristic of someone or something”
“Configuration”: “an arrangement of parts or
elements in a particular form, figure or
combination.”
“Pattern”/ “Ornament”: Two-dimensional feature
which are put on articles for decorative
purposes.
Kestos Ltd v Kempat Ltd (1935) 53 RPC 139
(ChD).
• Luxmoore J: “Shape and configuration are for all practical purposes
considered as synonymous. Each signifies something in three
dimensions; the form in which the article itself is fashioned. Pattern
and ornament can, I think, in the majority of cases be treated as
practically synonymous. It is something which is placed on an article
for its decoration. It is substantially in two as opposed to three
dimensions. An article can exist without any pattern or ornament upon
it, whereas it can have no existence at all apart from its shape or
configuration.”
“Article”
Section 3(1): “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.

Refer to section 3(2)

“Eye Appeal” v dictated solely by function test

• The eye is that of the prospective customer and the

appeal is that created by a distinctiveness of shape,
pattern or ornamentation calculated to influence the
customer’s choice.

The issue to consider: What if the design is dictated

solely by function but it has eye appeal. Is the design
registrable?

• Courts have held that it is difficult to determine whether a

shape or design is registrable or not if the design has
eye appeal but is dictated by function. Design entitled to
“some protection.” however a functional design in the
form of drawing may be protected by copyright law.
• Redland Tiles Ltd & Ors v Kua Hong Brick Tile Works
[1966] 2 MLJ 62

– A case concerning the manufacturing and design for

roof tiles. A local company also produced similar tiles
as the P. D argued their tiles were different in design
and appearance. Court applied the eye appeal test.
Sommer Allibert (UK) Ltd & Anor v Flair Plastics Ltd [1987]
RPC 599 (CA)
• Design of plastic garden chairs. P = Madrigal. Had a
backrest with shallow vertical grooves and the seat had
front to back grooves,
• D chair was sonata. Possessed a backrest with shallow
horizontal grooves and the seat had side grooves.
• Issue: whether the grooves on the chair back and seat
amounted to shape and configuration or pattern on
ornament.
• Looked at the Ps statement of novelty.
• Held: grooves were features applied to the chair by
manufacturing it in that shape and configuration. In this
case the design of the grooves was held to be shape
and configuration as it existed due to the process of
manufacturing.
Aspro- Nicholas Ltds Design Application [1974] RPC 645

– The applicant sought to register a design for

medicinal tablets inside transparent capsules. The
issue was whether the design was new or original.
The application was refused by the officer acting on
behalf of the registrar on the ground that it was an
obvious combination of known features and therefore
was not new or original.

– The applicant appealed but the appeal was dismissed

by the court on the ground that to qualify for
registration a design must be both new and
something more than bare novelty over the prior art is
required.
Lamson Industries Ltd’s Application [1978] RPC 1
(Registered Design’s Appeal Tribunal)

• Pre-printed computer print-out stock form consisting of

folded sheets of paper with printed bands of colour.
• Issues: (1) bands of colour were features of pattern or
ornament (2) whether the bands in the finished article
appealed to and were to be judged by the eye.
• Appeal dismissed: though the bands of colour were
features of pattern or ornament the design did not qualify
for registration since the bands were not features which
in the finished article would be judged solely by the eye.
• Customer will choose for monetary value rather than
how it looks. Paper was excluded from the definition of
the article.
• But held that this pattern was eye appealing and would
be registrable as wallpaper rather than printout.
Smith Kline and Frebcj Laboratories Ltds Design
Application [1974] RPC 253
• Involved two application for registration of multicolored
capsules as registered design.
• Two issues: colour could be taken into account and if
yes, to what extent.
• Whether choice of combination of colors was sufficient to
impart novelty.
• Application were refused by the registrar.
• Appeal dismissed. Held the effect of colour in designs
could not be ignored. Though normally differences in
colour were unlikely to be important. The court further
stated that the colour might or might not make a material
difference depending on the circumstances and nature of
the design in question.
Sifam Electrical Instruments Co Ltd v Sangamo Weston Ltd
[1971] 2 All ER 1074

• The design related to the front of an ammeter for measuring

electrical current. D copied the design based on the Ps
sketches. P argued that the ammeter fronts were articles
and were registrable.

• Issue: whether the front of the ammeter formed a part of

“made and sold separately” to qualify as a RD.

• Held that the manufacture of ammeters and ammeter fronts

formed part of the same operation so that the design
applied to the ammeter fronts were not registrable.
KK Suwa Seikosha’s Design Application [1982]
RPC 166

• Application to register two designs to be applied to a

panel for a digital watch.
• Registration refused. Feature was not produced in a
finished article unless it was connected to the watch
circuitry.
• Appeal: decision was reversed. Feature of the design
although not necessarily visible at the time of purchase,
became visible when the article was used for its
intended purpose.
The Teik Boay v Chuah Siak Loo [1962] MLJ 80

P owner of a design in respect of wooden stools sought an

injunction to prevent the D from infringing his design.
The D argued that there was no infringement since the
design had been used by the D even before the date of
registration and therefore the design was not new and
original.

Held: that since there was publication of the design prior to

the registration the design was not new. / prior
publication invalidates a design on the ground that it is
not new.
Sebel & Cos’ Application (No 1) [1959] RPC 12

• Design relating to a rocking horse. Similar design which

existed prior to this application but substantially different.
• Held: no originality. Refused.
• GP: only a new design registrable. Registration will be
refused
– Design already published
– Differs only in immaterial detail
– Features commonly used in trade.
Extra Cases
• Re Littlewood’s Pools Ltd’s Application (1949)
66 RPC 309
• Calder Vale Manufacturing Co and Lappet
Manufacturing Co Ltd’s Design (1935) 52 RPC
117
• Norton v Nicholls (1859) 28 LJQB 225
• Besalon International Ltd v South Strong
Industries Sdn Bhd [997] 2 AMR 1333
• Phillips v Harbro Rubber Co (1920) 37 RPC 233
(HL)
• Gaskell & Chambers Ltd v Measure Master Ltd
[1993] RPC 76
• Masterman’s Design [1991] RPC 89
“Eye?”
– Not defined in the statute
– Is it the judge or that of the customer?
– AMP Inc v Utilus Pty Ltd [1972] RPC 103
• Case concerning the infringement of registered
design in electrical terminals for washing
machines.
• D also came up with a similar design: terminals
function by forming an electric connection between
the two electric conductors, the tab and the wire.
• Issue: whether the features of the design of the
terminal were dictated solely by function.
• HOL held: features of the design were dictated by
function and that the design was not registrable.
Eye referred to: customer’s eye.
Question: If not apparent to the naked eye?
» Ferrero’s Design Application [1978] RPC 473
– It is necessary for the design to be apparent to the
purchaser at the time of purchase as long as the
elements of eye appeal present.

– Article was a chocolate egg. Design to the exterior and

interior of the egg. Novelty was the contrast between the
exterior and the interior of the egg.
– Initially refused on the ground that the design was not
visible in the finished article. / break the egg.
– Reversed. Design present when customer buying it and
could have been influenced. i.e.. Not necessary for the
design to be apparent to the purchase at the time of
purchase so long as the eye appeal elements were
present.
Question: Eye appeal dictated by function?
Interlego AG v Tyco Industries Inc [1988] 3 WLR 678
• P sold and manufactured toy building blocks. D copied
and manufactured them in the US and HK.
• P sought an injunction to restraint the D from infringing
their rights.
• Issue: Interlocking blocks registrable?
• Lego: mainly functional.
• Held: Functional in nature the design had been made or
created that way to give visual appeal that attracted
buyers. Held registrable.
• But only on limited instances.
Section 3 (1)….. “…
(a) method or principle of construction; or..”
Not a design.
Cow (PB) & Co Ltd v cannon Rubber Manufactures Ltd [1959] RPC
347
– Design of hot water bottles
– P registered owner, sued the D for infringement
– D argued P design was invalid since the rib on the hot water
bottle was a feature of shape or configuration dictated by
function that the hot water bottle had to perform
– Court at first instance rejected this
– Appeal was dismissed by the CA. Issue was whether the rib of
hot water bottle was a shape or configuration that gave the hot
water bottle a unique design.
– Held: not a shape but it was a configuration that gave the hot
water bottle a unique design since the ribbing marked a feature
of the bottle as a whole.
– Here the configuration was not dictated by function.
(b) Features of shape, or configuration of an article which
(1) are dictated solely by the function which the article
has to perform; 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.

• This is known as the “must match exclusion”

• The principle is that: The IDA will not protect the design
of an article that is dependent upon the appearance of
another article. Thus, design for spare parts will not
qualify for registration.
British Leyland Motor Corp Ltd & Anor v Armstrong Patents
Co Ltd & Anor [1986] 1 AC 577

• P manufactured motor cars and spare parts.

• Alleged that D had produced replacement exhaust pipes
of the Ps cars by copying the shape and dimension of
the original.
• P brought and action under copyright
• First instance held that the design of the pipes was
purely functional and that it was not registrable design
• Also infringed copyright by copying
• D appealed. The decision was upheld at COA
• D appealed to HOL. One issue: design of a spare part
was protected by registered design? Design nor
registrable under design law since they have no eye
appeal. (The court allowed the appeal on copyright
ground)
Dorling v Honnor Marine Ltd [1964] 1 All ER 241
• P designed a build it yourself sailing dinghy and licensed
the D to build them according to the Ps plans and sell
the components parts. Negotiations broke down. But D
continued to manufacture and sell the parts/ P brought
an action for infringement.
• Issue: kits parts were registrable. Individual parts not
registrable.

Ford Motor Co Ltd’s Design Applications [1995] RPC 167:

Relating to motor vehicle parts. Spare parts are “articles” in
the act.
Held: spare parts must have an individual life and not just
adjunct.
Requirement no 2: Section 12 (1) ID shall not be
registered unless it is new.

Aspro-Nichola’s Ltd’s Design Application [1974] RPC 645

Registration of a design for medical tablets inside
transparent capsules. Issue- is the design new?
“New” not really defined. Is it a new, and original
design.
See (section 12 (2)
(a) If already published design
(b) Design differs in immaterial detail
(c) Features commonly used
Then not new.

Requirement No 3:
Section 13 (ID contrary to public order or morality – not registrable )
Masterman’s design [1991] RPC 89
Soft toy in the form of a Scotsman wearing a kilt. Underneath the kilt his
body was shown.
Ownership of Industrial designs (Section 10)

The author of an industrial design shall be treated as the

original owner of the ID.
❖In case of a commission the person commissioning
will be the original owner subject to contrary
agreement
❖ Employee employer situation the employer original
owner unless stated
❖ ID created by a computer- if there is no human
author the person by whom the arrangements
necessary for the creation of the ID is the author.
❖Original owner may assign interest to another the
whole or part of his interest in the ID

•
How is industrial design infringed?

• In Malaysia, industrial design is infringed the moment the

requirements of sec 32(2) are satisfied.

• For example, 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 these acts i.e. 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
license or consent of the owner; etc.

• It is important while stating how industrial design is infringed in

Malaysia, reference be made to sec 32(3) which deals with an
exception i.e. such an act not considered as an infringement.
(consent)
Section 31 (Joint ownership)
ID registered in favour of 2 or 3 In the absence of any
agreement to the contrary:- each owner may exploit the
registered ID on his own without consent of the other
What are the rights of an owner of industrial design?

• In Malaysia, sec 32(1) of the Industrial Design Act 1996

provides for the right of an industrial design owner. It
states that “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 sale, hire or to offer or expose for sale or
hire, any article to which the registered industrial design
has been applied”.

• Based on the provision of the section, it would imply that

if you have a new shape or pattern for a product, you
may be able to protect it as a design (industrial design).
Section 35 (Remedies)
Damages or account of profits, injunction (also
for imminent infringement), other legal remedies
❖If guilty of each Offence :-
➢Fine not exceeding RM15,000
➢Imprisonment not exceeding 2 years
➢Both