In a court action between Tropicana Products, Inc. (“Tropicana”) and the F&N companies (Fraser and Neave, Limited and its subsidiaries, F&N Diaries (M) Sdn Bhd and F&N Beverages Manufacturing Sdn Bhd) (“F&N” collectively), the Court of Appeals in Malaysia (“Appeals Court”) reversed the decision of the Kuala Lumpur High Court (“High Court”) granting Tropicana’s infringement claims and further revoking F&N’s industrial design registrations.

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Background

Tropicana, a company incorporated in the United States of America, is the proprietor of Multiple Industrial Design Registration No. MY-06-00624 for a bottle design registered in Malaysia on 10 February 2006.

Tropicana alleged that its bottle design had been infringed by F&N. Tropicana then filed infringement actions before the High Court against F&N and initiated invalidation action against F&N registered industrial design. Tropicana also applied for an interlocutory injunction to restrain F&N from using their bottle design. All of these cases were consolidated and were heard together by the High Court.

By way of counterclaim, F&N sought for cancellation of Tropicana’s industrial design registration and for its subsequent removal from the Register.

The High Court ruled that F&N had infringed Tropicana’s design because F&N’s bottle designs were obvious imitations of Tropicana’s registered design. The High Court also allowed Tropicana’s revocation action against the design registration of F&N.

Aggrieved, F&N filed an appeal.

Appellants’ Submissions

The Appellants claimed that Tropicana’s bottle design did not qualify for protection under the Industrial Designs Act 1996 (IDA) because the design is not new in view of the existence of the POKKA bottle design, which is identical to Tropicana’s design and disclosed to the public in Malaysia before the priority date of the design registration. Moreover, the features of shape or configuration thereof were dictated solely by the function which the bottle had to perform.

F&N submitted sufficient evidence to show the existence of the POKKA design as early as 2004, which was earlier than the priority date of Tropicana’s design registration.

The Court of Appeal’s Decision

In determining novelty, the Appeals Court compared the prior POKKA design with Tropicana’s design based on the drawings or representations contained in the certificate of registration.

The Appeals Court ruled that Tropicana’s design was not registrable since the design did not fall within the definition of “industrial design” under Section 3(1) of the IDA, which requires that the design must have an element of eye appeal and its features of shape or configuration must not be functional in nature. The Appeals Court held that the design failed to meet both of these requirements and opined that every feature of Tropicana's design was chosen to fulfill functional means and the bottle was shaped to counter the effect of the vacuum created in the bottle caused by the hot-fill bottling process.

The Appeals Court further held that Tropicana’s design did not meet the registrability requirements under Section 12 of the IDA due to lack of novelty over the prior POKKA bottle design already disclosed to the public in Malaysia before the priority date of the design registration. In the Appeals Court’s findings, Tropicana’s design differed only from the prior POKKA design in immaterial details and the features of shape and configuration thereof were found to be commonly used in the relevant trade. The use of hot-fill vacuum panels and other features in Tropicana’s design was already a commonly accepted method in the industry in reinforcing hot-fill polyethylene terephthalate (PET) bottles.

The Appeals Court then ordered the invalidation and subsequent removal of Tropicana’s Industrial Design Registration No. MY-06-00624 from the Register of Industrial Designs, and consequently dismissed the infringement cases filed by Tropicana after the invalidation of its industrial design registration. The Appeals Court said that, in order for Tropicana to be successful in its infringement claims under Section 32 of the IDA, it must first establish that it is the owner of a validly registered design.

The decision underscores the importance of having formidable and strong design registrations prior to filing a claim for infringement. Otherwise, the registrant exposes itself to the possibility of revocation on the basis of an invalid design registration.