MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
4.2 Requirements for Protection Generally, an industrial design can be protected if it is novel worldwide, non-functional and not contrary to public morality. An unregistered industrial design right in Malaysia would fall within the common law tort of passing off. To establish passing off, it must be established that the design has acquired goodwill belonging to the owner, there is a misrepresentation that the design belongs to someone other than the owner and that there is a likelihood of damage and/ or damage sustained by the owner as a result of the misrepresentation. 4.3 Registration and Term Upon filing of the industrial design application, it undergoes both formality and substantive examina- tion. If no office action is issued, the industrial design will be granted and published. A smooth industrial design application typically takes about nine months. An industrial design is valid for a period of five years and may be renewed for another five years up to a maximum of 25 years. 4.4 Enforcement and Remedies An act of infringement of industrial design arises when a person without the licence or consent of the owner of the industrial design applies the industrial design or any imitation of it to any article that the industrial design is registered, imports into Malaysia for sale or for trade any articles of the industrial design or any imitation of it, sells or offers or hires or offers to sell the articles and/or imitations of it. Generally, in the event of an imitation and/or infringe- ment, the owner of the industrial design may: • lodge a complaint to the Malaysian Ministry of Domestic Trade and Consumer Affairs (KPDNHEP), upon which the enforcement officers may take nec- essary actions to seize the goods; • lodge a complaint to the Royal Malaysian Customs Department if the owner of the industrial design is aware of any imitation and/or infringing goods being imported and/or exported; and • take necessary legal action against the infringers in court.
The civil remedies available apart from an interim injunction, subject to the Court’s discretion, are a declaration of infringement, a permanent injunction to prevent further infringement, an order to deliver or destroy infringing materials and monetary damages, which can be awarded as a lump sum or based on an account of profits. Additionally, the court may award aggravated, exemplary or punitive damages, among others. As for legal fees and costs, these are generally recoverable at the court’s discretion, depending on the complexity of the case and in accordance with the standard scale of costs prescribed under the Rules of Court 2012. 4.5 Functionality and Technical Features The Malaysian courts determine whether an article is dictated by function based on its visual appearance and appeal to the eye. Usually, the article may also be regarded as functional based on the article’s name. Partial design protection is also accepted in Malaysia. Partial designs claiming protection are usually shown in solid lines, whilst the remaining designs are repre- sented with dotted lines. Accordingly, the assessment of the functionality of the article is limited to the aspect claimed. However, a design may be refused and/or invalidated for technical reasons, particularly where the design has no aesthetic value and the feature is dictated solely by technical function or necessity. Malaysia does not have a specific provision governing trade secrets. Trade secrets are often categorised as confidential information and are therefore governed by common law and contractual agreements between the parties. Information that qualifies as a trade secret is either defined under the common law or further defined by the parties in their respective contractual agreements. Typically, trade secrets are sensitive information and/ or data, including, but not limited to, know-how, for- mulas, recipes, algorithms, customer databases, busi- ness methods and research and development data, 5. Trade Secrets 5.1 Legal Framework and Protectable Information
189 CHAMBERS.COM
Powered by FlippingBook