You have designed a new product with a unique artistic appearance, and you wish to protect this design from being copied by others. In Malaysia, this is known as Industrial Design, or Design Patent in some countries.
The first step to protect your product design is to apply for industrial design registration. The registration would grant exclusive ownership of your industrial design, including its commercialisation from manufacturing, licensing and sale of the product bearing the design, pursuant to the Malaysian Industrial Designs Act 1996 ("Industrial Designs Act").
What is an industrial design?
An industrial design means features of shape, configuration, pattern or ornament applied to an article by any industrial process which in the finished article appeal to the eye and are judged by the eyes. For example, the shape of a bottle, furniture, design of clothing & etc.
To clarify, "article" in the context of the Industrial Designs Act means any article of manufacture or handicraft.
To be registrable as an industrial design, your design must fulfil the following requirements:
Interpretation of Industrial Design – features of shape, configuration, pattern or ornament, applied by an industrial process to an article, appealing to the eye, not falling under the exclusions
New in Malaysia or elsewhere
Not contrary to public order or morality
(Sections 3, 12 and 13 of Industrial Designs Act)
What is the difference between industrial design and patent?
Some may be confused between industrial design and patent, particularly when we are protecting the same product.
The main difference between them is that 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.
If applicable, the same product may register for both patent and industrial design. Interested in finding out how to register a patent? It's here!
Step 1: Preparing and filing an industrial design application
To file an industrial design application, you should get the following information ready:-
Applicant’s name and address (aka the owner of the design)
Author’s name and address
Identify the classification of the article pursuant to the Locarno Classification
Representations of design - These representations can be in the form of photographs or drawings. Although there is no prescribed minimum number of views to be submitted, it is recommended to have 6 to 7 views to show the whole design, eg. front, rear, left, right, top, bottom and perspective views. Particular attention should be placed on the novel features.
Statement of novelty – The features of novelty on the design should be indicated. Standard wording is recommended when drafting this statement. For example, the "novelty of the design resides in the shape and configuration of the articles"
Declaration of priority, if claimed – A certified copy of the priority documents and its verified English translations should be given, after the filing date, if requested by the Registrar.
It is important to note that there are 2 types of names to be included in the industrial design application, that is, the applicant’s name and the author’s name. The applicant will be the owner of the industrial design.
In some instances, the applicant and the author can be the same person. This should be stated clearly in the application form.
On the other hand, they could also be different persons. For example, the author is an employee of the applicant and the applicant is a company. In this case, you should file a statement justifying the applicant's right to registration.
Once the above information is in place, the industrial design application can be filed by filing ID Form 1.
Step 2: Examination of industrial design application
Upon filing, the Examiner will examine whether the application complies with the formal requirements. If there are any insufficiencies in the formality requirements, you will be allowed to amend the application to comply with the requirements.
(Section 21 of Industrial Designs Act 1996).
If the application fulfils the formal requirements under Section 21(1) of the Industrial Designs Act, the Registrar shall register the industrial design and issue a certificate of registration. Now your registration is complete!
Thereafter, the Registrar shall publish the registration in the Official Journal. The certificate of registration shall be the prima facie evidence of the facts stated therein and of the validity of the registration.
(Section 22 of Industrial Designs Act 1996)
Step 3: Consider an overseas industrial design application
The protection of industrial design is territorially based. Therefore, if you wish to protect your design overseas, you should make a separate filing in each desired country.
It is not a mandate to file your overseas application at the same time when you file one in Malaysia. However, you are encouraged to file one as soon as possible.
If Malaysia is your first filing country, you should file the overseas application within 6 months from the Malaysian filing date in order to preserve the priority right, under the Paris Convention.
Step 4: Renewal and Maintenance
It's not the end after you have secured your industrial design registration. It should be renewed and maintained from time to time.
Your industrial design will be protected for a maximum term of 25 years from the date of filing of your design application, subject to renewal every 5 years.
On the other hand, if there are any changes in the particulars of registration or change of ownership, it should be recorded with the Malaysian Registry of Industrial Designs as soon as possible.
Not All Designs Are Registrable
It should be pointed out that despite fulfilling the 3 requirements above, a design is not registrable if it is:-
(a) a method or principle of construction; or
(b) features of shape or configuration of an article which-
are dictated solely by the function which the article has to perform; or
are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.
(Section 3 of Industrial Designs Act 1996)
Engage an Industrial Design Agent
Industrial design registration is a highly technical and lengthy process, it is strongly recommended to engage a competent industrial design agent to assist you in all the above processes. We need to ensure all the legal requirements have been complied with and to avoid missing deadlines, simply because we do not want these errors to jeopardize your registration unnecessarily!
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)
IP Legal Intern
Bachelor of Laws
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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