What is a Design?
A design encompasses the features of shape, configuration, pattern, or ornament applied to any article. A design right is an intellectual property right which applies to original designs of the shape, configuration, pattern or ornament applied to any manufactured/finished product. It should be noted that design law protects the distinctive visual appearance of a manufactured product or article, not the product or article.
Benefits of a Design Right
The owner of a registered design enjoys exclusive rights to deal with the product upon which the design was applied or incorporated, meaning the use of the particular design. Also, the owner of a registered design is able to prevent others from copying the design for an initial period of 5 years (and in the UK, up to a maximum of 15 or 25 years).
In the UK there are two streams of protection for industrial designs – registered design right and unregistered design right. Although an industrial design may be protected by both forms, they have different underlying characteristics in that each of the intellectual property rights receives protection for different periods of time and the monopoly protection also differs. Registered design right protection confers an absolute monopoly and can last up to 25 years so long as the registration is renewed and such right does not require a work to be copied before infringement occurs. Unregistered design right on the other hand can last for up to 15 years from the recording of the design in a design document but such right does not confer absolute monopoly. For an infringement action there must be evidence of copying of the original design.
Generally, the right to legal protection belongs to the creator or author of the industrial design. However, when an industrial design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be treated as the creator or author of the industrial design. Likewise, where an industrial design is created in pursuance of a commission for money or incentives, the person commissioning the industrial design shall, subject to any contrary agreement between the parties, be treated as the creator or author of the industrial design.
The rights of the owner of a registered design are personal. Like any other personal property, they are capable of assignment and transmission by operation of law. Additionally, the owner has the right to take legal action and to claim damages against infringers.
Why should I register my Design?
Although it is not necessary for you to register your design in order to use it, it is advisable to do so, as this will safeguard the appearance of your goods, making it a valuable tool for your business. Moreover, registration gives you an exclusive right to your design. Registration enables you to prevent others from making, importing for trade or business, renting or selling, offering, or exposing for sale or rent any article in respect of which the design is registered.
How are Designs protected?
An industrial design must be registered with the domestic Registry in order for it to be protected under the federal law.
What are my exclusive rights as a registered Design owner?
As a registered design owner you will have the following rights
- Exclusive right to use and exploit your design by applying it to any article for which it is registered
- Exclusive right to grant a license to others to use your design on specific terms
- Right to sell the whole or any part of your interest in the design
- Right to prevent others from importing articles into the country where protection was sought, in which the design has been applied.
Can I obtain protection for my Design in other countries?
If you require protection in other countries, separate applications must be filed in the country where protection is sought.
What are the criteria for registration of a Design?
The design of an article of manufacture must be new, meaning the details must not have been made available to the public, at the time of filing the application.
When should I register my Design?
There are no definite rules on the right time to file, but it is best to file your design as quickly as possible. This will help avoid any publication, which means the design must not have been made public or offered for commercial sale or use in the country where protection is sought or in some instances, anywhere in the world.
Is there a need to conduct a search before filing my application for Design protection?
Yes, you should conduct a search of the existing Register maintained with the relevant registry.
If my Design has been disclosed before my application for registration, will I lose the rights to my Design?
Not if you had filed your application within 6 months of the publication.
Who can apply for Design right?
Only the proprietor of a design may apply for and obtain registration for an industrial design. In the case where the design is commissioned by a party, the commissioner shall, unless there is contrary evidence between the parties, be treated as the party entitled to file the application.
When a design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be entitled to make an application for registration of the design.
What is the duration of the protection given?
Protection is for an initial 5-year term. It begins on the date of filing, up to a maximum period of 15 years, provided the maintenance fee is paid before the expiry of the initial term. Failure to do so will result in the ceasing of protection.
Will I lose my rights to my Design if I miss the date for payment of the maintenance fees?
Under the Malaysian Industrial Designs Act, you are given a grace period of 6 months from the date on which the maintenance fee is due, failing which your registration will lapse. However, you have 12 months after the date of notice of lapse to apply for restoration of your registration. Restoration will be allowed if there has been an honest oversight to effect payment of the maintenance fee.
What do I need to file an application for an Industrial Design?
An application for an industrial design should consist of
- the application form,
- at least one drawing or photograph of the design, and
- the prescribed fee(s).
The description, along with the drawings and title, must provide an accurate picture of the design.
What is the difference between a Design and a Patent registration?
A design registration protects only the appearance of an article. For protection of the manner in which a design works, or the way in which a design is constructed, or particular ways in which a design is used, you should file for patent protection.
Who may apply for a compulsory license in respect of a registered Design?
Any person may apply to the Court at any time after the registration of an industrial design for the grant of a compulsory license. This is, provided that the industrial design is not applied for in Malaysia by any industrial process, or means to the article in respect of which it is registered, to such an extent as is reasonable in the circumstances of the case.
Are handicrafts protected?
In Malaysia the Industrial Designs Act 1996 provides protection for handicrafts or any part of a handicraft. An ‘article’ in the Act is defined to include handicrafts.
Designs that may be Registered
In order to qualify for registration, at the time of filing, the design or its appearance must be novel or, as it is sometimes expressed in certain federal legislations, original. However, what constitutes novel or original differs amongst the laws of various countries. Sometimes, novelty is judged against all other parts of the world, which means the design must not have been disclosed to the public anywhere in the world. On the other hand, some countries require that the design must not have been disclosed only in the country where protection is sought. In either case, if a design is used, applied, or incorporated on a manufactured product, before an application for registration is made, the design in question will be rejected. Design registration protects the visual appearance of the manufactured product or article.
Designs that may not be Registered
Design registration is used to protect the visual appearance of manufactured goods, which means that the design must appeal to the eye and have an industrial application. Purely artistic designs are covered by copyright law and may not be registered. Also, designs which deal with the method or principle of construction, or how the product works, or are contrary to public order or morality, may not be registered.