The Industrial Designs Act 1996 of Malaysia (IDA) was passed in September 1996 and is expected to come into force on September 1 1999. The IDA will introduce an independent regime for the protection of industrial designs in Malaysia repealing existing legislation which allows for the automatic protection of industrial designs obtained in the UK under the UK Designs Act 1949.
With the coming into force of the IDA it will be possible to file national and convention applications for new designs in Malaysia. Priority can also be claimed based on a corresponding application filed within six months in a Paris Convention country. Applications filed within the transitional period of 12 months after the coming into force of the IDA will be entitled to claim the priority date of UK design applications pending on the date the IDA comes into force.
The definition of a design and the basic requirements for registration remain the same as under the UK Designs Act 1949. The test of novelty however is confined to disclosure within Malaysia. Disclosures in official exhibitions and unauthorised disclosure will also not defeat novelty if made within six months before the filing date. The IDA seems to suggest that an application will be examined only as to formalities. However formal requirements are not defined in the Act which merely states that the same will be defined in the upcoming Regulations. The term of registration is 15 years from the filing date with an initial term of five years renewable for two further five year terms. Existing UK registrations will, subject to procedures and fees to be prescribed in the Regulations, continue to enjoy protection for a full period of 25 years.
Entitlements to a registered design by virtue of an assignment, transmission or other operation of law will be ineffective against third parties unless recorded in the register of industrial designs.
The IDA provides a right of action for infringement of a registered design but no criminal offences. An action must be brought within a limitation period of 5 years from the date of infringement. A defence of innocent infringement is available to an infringer who proves that he was unaware that the design was registered despite reasonable steps taken to determine the same, disentitling the registered proprietor from claiming damages.
appears that registration may be easier to obtain under the IDA as applications are to be examined only as to formalities. However the IDA does provide for revocation of a registered design for lack of novelty. There are also provisions for the grant of a compulsory licence where the design in not applied in Malaysia by any industrial process to the article in respect of which it is registered. With the coming into force of the IDA, It will be possible to file applications for registration directly in Malaysia and protection will be dependant on whether there has been disclosure within Malaysia itself.
se are welcome changes. We now await the publication of the Regulations for the application procedures and fees to be applicable in Malaysia.
