Ownership of registered industrial designs
(1) Subject to this section, the author of an industrial design shall be treated for the purposes of this Act as the original owner of the industrial design.
(2) Where an industrial design is created in pursuance of a commission for money or money’s worth, the person commissioning the industrial design shall, subject to any contrary agreement between the parties, be treated as the original owner of the industrial design.
(3) Where, in a case not falling within subsection (2), 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 original owner of the industrial design.
(4) The original owner of an industrial design or the assignee of any interest in an industrial design may assign in writing to another person the whole or any part of his interest in the industrial design.
(5) Where an industrial design, or the right to apply an industrial design to any article, becomes vested, whether by assignment, transmission or operation of law, in any person other than the original owner, either alone or jointly with the original owner, that other person or, as the case may be, the original owner and that other person shall be treated for the purposes of section 11 as the original owner of the industrial design or as the original owner of the industrial design in relation to that article.
(6) In the case of an industrial design generated by computer in circumstances such that there is no human author, the person by whom the arrangements necessary for the creation of the industrial design are made shall be taken to be the author.
Right to apply and obtain registration
(1) The original owner of an industrial design is entitled to make an application for the registration of the industrial design.
(2) Where two or more persons own interests in an industrial design, all of the persons owning such interests, acting jointly, are, subject to any agreement among such persons to the contrary, entitled to make an application for the registration of the industrial design.
Registrable industrial design
(1) Subject to this Act, an industrial design shall not be registered unless it is new.
(2) An industrial design for which an application for registration is made shall not be considered to be new if, before the priority date of that application, it or an industrial design differing from it only in immaterial details or in features commonly used in the relevant trade—
(a) was disclosed to the public anywhere in Malaysia; or
(b) was the subject matter of another application for registration of an industrial design filed in Malaysia but having an earlier priority date made by a different applicant in so far as that subject matter was included in a registration granted on the basis of that other application.
(3) For the purposes of paragraph (2)(a), an industrial design shall not be deemed to have been disclosed to the public solely by reason of the fact that, within the period of six months preceding the filing date of an application for registration—
(a) it appeared in an official or officially recognized exhibition; or
(b) it has been disclosed by a person other than the applicant or his predecessor in title as a result of an unlawful act committed by that other person or another person.
Industrial design contrary to public order or morality
Industrial designs that are contrary to public order or morality shall not be registrable.
Certain registrations not to be extended or restored
13 A. Notwithstanding any other provision of this Act, where before the commencement of the Layout-Designs of Integrated Circuits Act 2000 an industrial design applicable to an integrated circuit or part of an integrated circuit within the meaning of that Act or an industrial design applicable to a mask used to make such an integrated circuit was registered under this Act, that registration shall not be extended or restored at any time on or after that commencement.
Application for registration
(1) An application for the registration of an industrial design—
(a) shall be made in the prescribed form and shall be filed at the Industrial Designs Registration Office;
(b) shall be accompanied by the prescribed number of representations of the article to which the industrial design is applied;
(c) shall contain a statement of novelty in respect of the industrial design to which the application relates; and
(d) shall be accompanied by the prescribed filing fee.
(2) Where the applicant’s ordinary residence or principal place of business is outside Malaysia, he shall appoint an agent in Malaysia upon whom notice or process relating to the application for registration of an industrial design may be served, and if the applicant fails to appoint an agent, the Registrar may refuse to proceed with the application until such agent has been appointed.
Multiple application
Two or more industrial designs may be the subject of the same application, provided they relate to the same class of the International Classification for Industrial Designs or to the same set or composition of articles.
Filing date
The filing date of an application for the registration of an industrial design shall be the earliest date on which all of the following conditions are satisfied in relation to the application:
(a) the documents mentioned in section 14 identify the applicant or applicants;
(b) the prescribed number of representations of the article to which the industrial design is applied is filed at the Industrial Designs Registration Office; and
(c) the prescribed filing fee is paid.
Priority date and right of priority under treaty or convention
(1) Subject to this section, the priority date of an application for the registration of an industrial design is the filing date of the application.
(2) An application may, pursuant to any international treaty or convention to which Malaysia is party, contain a declaration claiming the priority of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any state party to the said treaty or convention; and in any such case, the priority date shall be the earliest date on which such earlier national, regional or international applications were filed:
Provided that the application made under this Act has been filed within six months from such earliest date.
(3) Where the application contains a declaration under subsection (2), the Registrar may require the applicant to furnish, within the prescribed time, a copy of the earlier application certified as correct by the office with which it was filed.
(4) The effect of the declaration referred to in subsection (2) shall be as provided in the treaty or convention referred to in that subsection.
(5) Where any of the requirements of this section or any regulations pertaining thereto have not been complied with, the declaration referred to in subsection (2) shall be deemed to be invalid.
Withdrawal of application
The applicant for registration of an industrial design may, by notice in writing to the Registrar, withdraw the application at any time during its pendency, and any such withdrawal shall be irrevocable.
Amendment of application
19 (1) The Registrar may, on request to him in the prescribed manner, amend an application for the registration of an industrial design.
(2) An amendment under subsection (1) shall not be made if, as a result of the amendment, the scope of the application would be increased by the inclusion of any matter that was not in substance disclosed in the application initially filed.
Division of application after amendment
(1) Where a request for amendment under section 19 has been granted, and the amendment has the effect of excluding one or more industrial designs from the initial application, the applicant may at any time during the pendency of the initial application make a further application, referred to in this section as a “divisional application”, for registration of the industrial design or designs so excluded.
(2) A divisional application shall be entitled to the priority date of the initial application.
Examination
(1) Where an application for the registration of an industrial design has been accorded a filing date and the application is not withdrawn, the Registrar shall cause the application to be examined to determine whether it complies with the formal requirements.
(2) Where, as a result of the examination, it is determined that the application does not meet the formal requirements the Registrar shall notify the applicant and give him an opportunity to make observations on such finding and to amend the application within a specified period so as to comply with those requirements.
(3) If, within the specified period, the applicant fails to satisfy the Registrar that the formal requirements have been complied with, or to amend the application so as to comply with them, the Registrar may refuse to register the industrial design.
(4) The Registrar shall not refuse to register an industrial design under subsection (3) until the applicant has been given an opportunity to be heard.
(5) In this section, “formal requirements” means the requirements of this Act and of any regulations made under this Act which are designated by such regulations as formal requirements for the purposes of this Act.
Registration and publication
(1) Where the Registrar is satisfied that an application for the registration of an industrial design complies with the requirements of section 21, he shall—
(a) register the industrial design by recording the prescribed particulars in the Register; and
(b) issue to the applicant a certificate of registration of the industrial design in the prescribed form.
(2) As soon as possible thereafter, the Registrar shall cause to be published in the Gazette—
(a) a notice that the industrial design has been registered;
(b) the name and address of the registered owner; and
(c) any other matters constituting or relating to the industrial design which in his opinion it is desirable to publish.
(3) The certificate of registration shall be prima facie evidence of the facts stated therein and of the validity of the registration.
Registration of the same industrial design in respect of other articles
(1) Where an industrial design has been registered in respect of any article and the owner thereof makes an application—
(a) for registration, in respect of one or more other articles, of the registered industrial design; or
(b) for registration, in respect of the same or one or more other articles, of an industrial design consisting of the registered industrial design with modifications or variations not sufficient to alter the character or substantially to affect the identify thereof,
the application shall not be refused, and the registration made on that application shall not be invalidated by reason only of the previous registration, or of any disclosure or use after the priority date in respect of the application for the previous registration, of the industrial design registered on that application.
(2) The period of registration of an industrial design registered by virtue of this section shall not extend beyond the period of registration of the original registered industrial design and any extended period thereof.
Rectification of Register
(1) Subject to the provisions of this Act—
(a) the Court may, on the application in the prescribed manner, of any person aggrieved by or interested in the noninclusion in or omission from the Register of any entry, or by or in any entry made in the Register without sufficient cause, or any entry wrongfully remaining in the Register, or any error or defect in any entry in the Register, make such order for including, making, expunging or varying any such entry or for the correcting of any such error or defect as it deems fit;
(b) the Court may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the Register;
(c) in case of fraud in the registration, assignment or transmission of a registered industrial design or if in his opinion it is in the public interest to do so, the Registrar may himself apply to the Court under this section;
(d) an order of the Court rectifying the Register shall direct that notice of the order be served on the Registrar in the prescribed manner and the Registrar shall upon receipt of the notice rectify the Register accordingly.
(2) Notwithstanding subsection (1), the Court shall not make any order on the application of a person other than the Registrar until notice of such application has been given to the Registrar who shall be entitled to appear and be heard on the application.
(3) Any application for the rectification of the Register, which under subsection (1) is to be made to the Court and where the applicant is other than the Registrar himself, may, at the option of the applicant, be made in the first instance to the Registrar except where an action concerning the industrial design in question is pending.
(4) The Registrar may at any stage of any application for rectification of the Register made to him refer any such application to the Court, or he may, after hearing the applicant in any such application and the owner as well where the applicant is a person other than the owner of the registered industrial design, determine the question between them.
Source: Laws of Malaysia, Attorney General's Chambers of Malaysia (lom.agc.gov.my). Not a copy of the Gazette printed by the Government Printer (Interpretation Acts 1948 and 1967, s 61).
