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. It is the ornamental or aesthetic aspect of an article.

Industrial Designs are protected and governed by the Industrial Designs Act 1996 (“IDA 1996”) and the Industrial Designs Regulations 1999.

When is there an infringement?
An Industrial Design is infringed when there is unlicensed or non-consented application of the Industrial Design or any fraudulent or obvious imitation of it. The Industrial Design is also infringed when a party imports, sells, hires or offers or keeps for sale or hire any such article without licence.

Common Defences
Section 34 of IDA 1996
Any ground that may be relevant for purposes of revoking a registered Industrial Design would be available as a defence in any claim of infringement of the Industrial Design. There are usually two broad categories of defences available:

Challenge to validity of actual registration. This is to say that the registration of the Industrial Design ought not to have been granted in the first place. The challenge could be due to:

• Prior publication of the Industrial Design before it was registered pursuant to s 12 of the IDA 1996
• The Industrial Design is not a registrable design pursuant to s 3 of the IDA 1996.
• Registration was procured by unlawful means, being a ground to revoke or cancel the Industrial Design s 27 IDA 1996.
• Lack of novelty – in the case of Teh Teik Boay v Chuah Siak Loo 1[62] 1 MLJ 80, the fact that substantially similar stools were already sold to the public in considerable quantities mean that the Industrial Design was not new or original. 

Defences that do not challenge the validity of the registration. Other defences commonly relied upon that do not invalidate the registration of the Industrial Design itself would include:

• The infringing design does not in fact apply to the registered Industrial Design and is not a fraudulent or obvious imitation of the same, or that the design has been applied to articles that are clearly different.
• The Industrial Design does not satisfy the eye appeal test as opposed to being functional. In F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products Inc and other appeals [2013] MLJU 1591, it was held that the Industrial Design is only intended to protect truly aesthetic, stand-alone designs where competitors need not copy the same in order to compete in the same market.

Conclusion
Having a registered Industrial Design can in fact be a competitive advantage. It would be unfortunate if another company registers a popular Industrial Design and then seeks to enforce the same against its competitors who may have been in the market substantially longer. Whilst there are defences available in law, there is no necessity to take a commercial risk when a simple registration of the Industrial Design is not even an arduous task.

This article was written by Justin Yap ([email protected]), pupil-in-chambers, under the supervision of Chan Kheng Hoe ([email protected]).