The protection accorded to industrial designs is intended to cover design elements in articles that are mass-produced. It is important to note that if a design that can be registered is not registered, virtually no protection will be given for the design. The Malaysian Industrial Design Act 1996 came into force on 1st September 1999. Prior to the 1996 Act, industrial design registration in Malaysia was govern by three statues, namely the United Kingdom Designs (Protection) Act 1949 in West Malaysia, the United Kingdom Designs (Protection) Ordinance in Sabah and the Designs (United Kingdom) Ordinance in Sarawak (all currently repealed).
The main aim for the enactment was to reduce the cost involved in registering industrial designs, which was previously done in the United Kingdom. The amendment for the Malaysian Industrial Design Act 1996, provided for among other aspects, better benefits for authors with regard to protecting their design rights.
The amendments are as follows:
Section 3 – Interpretation
The Act used the word Gazette, where the approved designs registered are published.
The amendment to the Act now substitutes the word Gazette with Intellectual Property Journal.
Section 12(2)(a) - Registrable industrial design
The section previously read: “was disclosed to the public anywhere in Malaysia”
The Act now reads: “was disclosed to the public anywhere in Malaysia or elsewhere.” The word ‘elsewhere’ extends the disclosure of industrial design beyond local novelty.
Section 12(3) – Registrable industrial design
The section previously read – the author has 6 months period from the date of the official exhibition to file an ID application…
The Act now reads – the author has 12 months period from the date of the official exhibition to file an ID application…..
This allows the author more time to test the market with the proposed design.
Section 25(2) – Period of Registration
The section previously read - an industrial design may be extended for two further consecutive terms of five years each…..
The Act now reads - an industrial design may be extended for “four” further consecutive terms of five years…..
This gives the author more time to exploit the design.
Section 29 - Rights of owner are personal property
Previously, there was little clarity as to the rights and meaning of the words “Personal Property”. As such; the entire previous Section 29 was substituted to a well-defined Section 29(1) to (9), providing clarity and recognising intellectual property as securitisation, collateral for financial transactions
Section 30 - Registration of assignment, transmission or other operation of law.
The previous Section 30 is now substituted with a new Section 30, which encourages recordal of entitlements for the purpose of acknowledging the rights acquired by virtue of such recordal.
The Industrial Designs (Amendment) Act 2013 received Royal Assent on 18 January 2013 and has been published in the Gazette on 22 January 2013.