In the cases of Koay Kar Kheng v Rong Qiang Incense (M) Sdn Bhd and Koay Kar Kheng v Seong Loong (M) Sdn Bhd, the High Court of Malaya (“High Court”) revoked and expunged two (2) industrial design registrations, bearing designs of incense products registered under Class 99, from the Register of Industrial Designs due to lack of novelty over prior designs already disclosed to the public before the respective priority dates of the industrial design registrations.

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Persatuan Pedagang-Pedagang Barang-Barang Sembahyang Malaysia, an association of manufacturers and traders of incense products in Malaysia, filed revocation actions before the High Court to cancel and subsequently expunge Industrial Design Registration No. 06-00853-0101 for the design on incense coil and Industrial Design Registration No. 05-00975-0101 for the design on joss stick, both in Class 99, from the Register of Industrial Designs kept by the Malaysian Industrial Designs Office. The association was represented by its public officer, Koay Kar Kheng (“Applicant”).

The Respondents, Rong Qiang Incense (M) Sdn Bhd and Seong Loong (M) Sdn Bhd, published a warning notice in a Chinese national newspaper, Sin Chew Daily, on 17 November 2011, claiming exclusive rights over the designs of the incense products. After publication of the warning notice, several members of the association expressed concern over their ability to continue to manufacture and sell their incense products. To protect the business interests of its members, the association then requested the Respondents to voluntarily withdraw their industrial design registrations, citing that the registered designs were not new in view of the existence of similar designs before the priority dates of the design registrations.

The Respondents denied the association’s claims and refused to voluntarily revoke their design registrations. The association therefore had no choice but to bring revocation actions before the High Court to protect the interests and welfare of its members.

Applicant’s Submissions

The cancellation is based on the lack of novelty of the incense products contained in the Respondents’ industrial design registrations. The Applicant claimed that both designs were not new pursuant to Section 12 of the Industrial Designs Act 1996 (IDA), which states that a design is not considered to be new if the same is identical or differs only from prior designs in immaterial details or in features commonly used in the relevant trade disclosed to the public anywhere in Malaysia.

The Applicant presented evidence of prior use of the designs in Malaysia in the form of photographs, website printouts, and advertisements of incense products showing the existence of these designs before the respective priority dates of the design registrations. A statutory declaration of a local manufacturer and retailer of incense products had also been submitted, affirming that incense coils bearing an identical design have been imported and distributed in Malaysia since 1970’s.

The Applicant further contended that the Respondents’ designs were not novel. The Applicant then requested the High Court to revoke the industrial design registrations pursuant to Section 27(1)(a) of the IDA and to rectify the Register of Industrial Designs by expunging them from both of the design registrations under Section 24(1)(a) of the IDA.

Respondents’ Submissions

The Respondents, on the other hand, argued that their industrial design registrations were new and different from the prior designs. They also submitted that the Applicant had no locus standi to bring revocation actions before the High Court and had no power to initiate any legal proceedings on behalf of its members.

The High Court’s Decision

On the issue whether the Applicant had locus standi, the High Court opined that the association has the responsibility to promote and protect the interests of its members including their commercial interests. Hence, the Applicant had locus standi to commence the appropriate actions against the Respondents. The High Court also held that the Applicant qualifies to bring revocation actions in court under Section 27(1)(a) of the IDA, which states that any person may apply to revoke an industrial design registration at any time after the registration of an industrial design.

In deciding whether the registered industrial designs were new, the High Court compared the Respondents’ designs with the prior designs cited by the Applicant for any similarities or substantial differences. In conducting the test, the High Court looked at the appearance of the objects as a whole as shown in the representations submitted by the Applicant and the drawings contained in the Respondents’ design registrations. The High Court opined that, for the design to be considered novel, the difference in design should be substantial.

The High Court ruled that the Respondents’ designs were not novel within the meaning of Section 12 of the IDA. The High Court held that a registered design need not be shown to be identical to a prior design in order to prove that it was not new at its priority date. Substantial similarity or showing that the registered design differs from a prior design only in immaterial details or features commonly used in the relevant trade would more than suffice.

The High Court then ordered that the Register of Industrial Designs be rectified by expunging therefrom the whole entries relating to Industrial Design Registration Nos. 06-00853-0101 and 05-00975-0101 pursuant to Section 24(1)(a) of the IDA.

Industrial Designs do not undergo a substantive examination process. Hence, it is important for applicants of design registrations to make sure that their designs comply with the registrability requirements of the law because while a design registration may be granted, an infringement action is likely to fail on account of a weak design registration.