Industrial Designs, as defined and governed by the Malaysian Industrial Designs Act 1996, are features of shape, configuration, pattern or ornament applied to an article through industrial processes or means. An Industrial Design is an Intellectual Property Right aimed at protecting the appearance of a product, in particular resulting from its lines, contours, colours, shape, and materials. Registered designs can be a valuable and cost-effective component of an Intellectual Property portfolio, but they are often underutilised.
Example of an Industrial Design Filing
Name: Humidifier
Applicant: Dyson Technology Limited
Date of filing: 31/10/2019
FIG. 1 is a front perspective view of a humidifier showing our new design;
FIG. 2 is a front view thereof;
FIG. 3 is a rear view thereof;
FIG. 4 is a side view thereof;
FIG. 5 is a side view of the opposite side of FIG. 4;
FIG. 6 is a top view thereof; and,
FIG. 7 is a bottom view thereof.
Requirements for an Industrial Design to be registrable
In order for an object to be eligible for protection as an Industrial Design, the law requires the design to be novel and to have individual character. In other words, an Industrial Design is not registerable unless it is “new”.
Industrial Designs in Malaysia have a worldwide novelty requirement. For a design to be registrable it must not have been publicly disclosed in any way before the application is filed. You should keep your Industrial Design to yourself until your Industrial Design application has been filed under the Malaysian Industrial Designs Act 1996.
However there is an exception to the above. A design will not be deemed to have been disclosed to the public if it appeared in an official exhibition or it has been unlawfully disclosed by a person other than the applicant or his predecessor in title within the period of six (6) months preceding the application filing date. In other words, you will six (6) months to file your Industrial Design if it falls under the above circumstances.
For an Industrial Design to be “new”, it must be substantially different from an existing design and not differ from the existing design only in immaterial details or in features commonly used.
Further, if the configuration of an article is purely dictated by its function, the article shall be excluded from Industrial Design protection. For instance, the threads of a screw and a nut, the grooves of a key and the key slots of a lock are purely functional.
In summary, the requirements for registrability for an Industrial Design are as follows:
- The design must come within the definition of “design”;
- The design must be “new” and have “individual character”; and
- The design must not be purely functional.
What cannot be covered and protected under Industrial Design?
- A method or principle of construction;
- The designs of articles depend upon the appearance of another article which forms an integral part of the article;
- The design differs only in immaterial details or features; and
- The features of the article are dictated solely by function.
What is the protection duration of an Industrial Design registration?
Industrial Design is given an initial protection period of five (5) years from the date of filing and is renewable every five (5) years with prescribed extension fees.
The maximum protection period is twenty-five (25) years. Industrial Design registration only has protection up to twenty-five (25) years. The Industrial Design will then lapse at the end of the twenty-five (25) years from the date of application.
What is the difference between Industrial Design and Patent?
The key distinction between Industrial Design and Patent registration is their respective areas of protection.
Industrial Design registration protects the exterior appearance of the product. It has nothing to do with its inherent technical function or feature. On the other hand, Patent registration protects the technical solution, feature or function of a product.
What are the advantages of the Industrial Design registration
Industrial Design can protect objects which are incapable of being trademarked or patented.
For example, the words “the best coffee in the world” cannot be registered as trademark for the goods “coffee”. However, if you have invented a coffeemaker machine having an original design that can be protected under Industrial Design, this would give the owner of the design a monopoly over this particular label “the best coffee in the world” which the coffeemaker machine is used on.
Industrial Design can also protect products which cannot be patented. For example, headlamp for a vehicle cannot be patented as an invention. You may however register a headlamp as an Industrial Design as long as the appearance of the headlamp is new. You will then have a monopoly over that headlamp of that particular appearance.
What information is required to register your Industrial Design in Malaysia
Generally speaking, the following information is required when filing an application for an Industrial Design registration:
- The design title;
- Applicant’s name and address;
- Author’s name and address;
- The Locarno class;
- Representations of design in the form of photographs or drawings; and
- Brief description of the design.
The Industrial Design is granted after the formal examination and novelty search are conducted by the Examiner of an Industrial Design application. In practice, objections of a substantive nature, for example, whether a design complies with the legal definition of designs in Malaysia may be raised.
If you think that a product of yours could be protected as an Industrial Design, please feel free to get in touch with us. We will be happy to assist you.
Written by:
Hardeep Singh