The Power Of Design: A Beginner’s Guide To Industrial Design In Malaysia

Industrial design, although a pivotal component of intellectual property (“IP”), often flies under the radar when compared to more familiar forms of IP such as patents, trademarks and copyrights. In Malaysia, this disparity is particularly obvious from the application and registration or grant statistics issued by the Intellectual Property Corporation of Malaysia (MyIPO)[1], with industrial design receiving less attention from the general public.

This article serves as a 101 to understanding industrial design in Malaysia.

What is “Industrial Design”?

Industrial designs, as defined and governed by the Industrial Designs Act 1996 (“Act”), are features of shape, configuration, pattern or ornament applied to an article through industrial processes or means. These features are intended to appeal to and be judged by the eye in the finished article. It is important to note that industrial designs do not include: 

• a method or principle of construction;
• features of shape or configuration of an article which are dictated solely by the function which the article has to perform. In simpler terms, this exclusion applies when an article is shaped in a specific way in order for the article to work properly; and
• features of shape or configuration which are dependent upon the appearance of another article of which the article in question is intended by the designer to form an integral part.

Registrable Design

An industrial design is not registerable unless it is ‘new’. What then is considered ‘new’?

An industrial design for which registration is sought is not ‘new’ if, before the priority date of the application to register the design, the design was disclosed to the public anywhere in Malaysia or elsewhere, or the design was covered by a different applicant’s application for registration filed in Malaysia with an earlier priority date.

A design will not be deemed to have been disclosed to the public if it appeared in an official exhibition or it has been unlawfully disclosed by a person other than the applicant or his predecessor in title within the period of six (6) months preceding the application filing date.

Further, for an industrial design to be ‘new’, it must be substantially different from an existing design and not differ from the existing design only in immaterial details or in features commonly used in the relevant trade. Slight modifications do not make a design ‘new’.

Industrial designs that are contrary to public order or morality will also not be registrable.

Who Owns The Design?

The author of an industrial design is generally considered the original owner. However, if the design is created under a commission, the person commissioning it is deemed the original owner, unless otherwise agreed. Similarly, if an employee creates the design during his/her employment, the employer is regarded as the original owner, subject to any contrary agreement. In cases where a design is generated by a computer with no human author, the person who made the necessary arrangements for its creation is considered the author.

A registered industrial design is a personal property capable of assignment, transmission or being dealt with by operation of law.

Why Is It Important To Register A Design?

The owner of a registered industrial design enjoys the exclusive right to make or import for sale or hire, or for use for the purposes of any trade or business, or to sell, hire or to offer or expose for sale or hire, any article to which the registered industrial design has been applied.

The original owner of an industrial design, as defined above, is entitled to make an application for the registration of the industrial design.

Below is a flowchart briefly outlining the process of an industrial design registration:

[1] https://www.myipo.gov.my/en/statistic-application-registration/#toggle-id-1

By Tay & Partners, Malaysia, a Transatlantic Law International Affiliated Firm.

For further information or for any assistance please contact malaysia@transatlanticlaw.com

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