Foreign design system

Malaysian Design System

1. In the beginning

Malaysia is a federal constitutional monarchy located in Southeast Asia, consisting of the southern part of the Malay Peninsula and the northern part of Borneo. It is a member of the Commonwealth of Nations, and shares land borders with Thailand, Indonesia, and Brunei, and is adjacent to Singapore and the Philippines across the sea. It is a member of ASEAN.

  • Area: Approximately 33 square kilometers (approximately 0.9 times the size of Japan)
  • Population: Approximately 3,200 million (Department of Statistics Malaysia, 2017)
  • Capital: Kuala Lumpur
  • Ethnic groups: Malay (approx. 69%), Chinese (approx. 23%), Indian (approx. 7%)
    (Note: Malay includes all other ethnicities except Chinese and Indians)

2. Subjects of protection

(1) Definition of design

A design is defined as "any feature of shape, contour, pattern or ornament applied to an article by any industrial process or means which appears to be visual and can be judged by the naked eye in the finished article." This includes three-dimensional or two-dimensional shapes.

(2) Design of the image

Although icons and graphic user interfaces (GUIs) are not defined in the Design Act, they may be subject to design protection in practice because registered designs exist.

3. Registration requirements

(1) It must be an "item"

"Article" means any manufactured or handicraft item, including any part thereof if it is manufactured and sold separately.

(2) Novelty

It must be novel in Malaysia or abroad.

The 2013 amendment introduced a global principle, changing the disclosure rule from domestic to global.

(3) Public order and morals

The design must not be contrary to public order or morals.

4. Reasons for non-registration

The following items cannot be registered as designs:

  1. Method or principle of construction
  2. The features of the shape or contour of an article that are dictated solely by the function that the article is to perform.
  3. A feature of the shape or contour of an article that is determined by the appearance of an essential part of another article
  4. An integrated circuit or part of an integrated circuit as defined in the Integrated Circuit Layout Act 2000, or a mask used to make such an integrated circuit

5. Duration

The 2013 amendment extended the maximum period from 15 years to 25 years. The period is 5 years from the filing date (priority date), and can be extended up to 25 years by renewal (up to four times for 5-year periods).

6. Design System

(1) Multiple designs in one application

Two or more designs may be filed in one application only if they relate to the same class of the International Design Classification or to the same set or composition of articles.

The designs may have different creators or priority applications, but the applicant must be the same.

There is no limit to the number of designs that may be included in an application, but there is no discount on the official fee per design.

Each design is assigned an application number and examined individually.

(2) Partial design

The partial design system has not been adopted. As mentioned above, if parts of an article are manufactured and sold separately, they can be applied for as parts.

(3) Design of set

Several articles that have the same general characteristics and are normally used or sold together can be filed as a "set" in one application.

7. Exceptions to lack of novelty

If any of the following applies within six months prior to the filing date, the invention will not be considered to have been disclosed to the public:

  • (1) is exhibited at an official or officially recognized exhibition; or
  • (2) Where the disclosure was made as a result of an illegal act by a person other than the applicant or the applicant's predecessor in interest.

If you wish to apply for the exception to loss of novelty, you must submit the required documents to the Malaysian Intellectual Property Office at the same time as filing the application.

8. Documents to be submitted

In particular, we will discuss the statement of novelty and the drawings.

(1) Statement of Novelty

Your application must contain a statement of novelty, which is a description, together with a drawing of the article to which the design applies, showing those features which are claimed to be novel.

(2) Drawings

①Dashed lines and shading

Broken lines or shading are permissible in the Malaysian Patent Office practice if they are used to distinguish the novel part of the design.

Generally, dashed lines or shading are used in partial design systems recognised in countries other than Malaysia to distinguish the part of a design sought to be registered from the rest of the design. However, as noted above, partial designs are not adopted in Malaysia's design law and dashed lines or shading are strictly limited to being used to distinguish new parts of a design.

②Color

Color is not permitted, even after the 2013 amendment. Therefore, drawings must be in black and white only. Line drawings are usually submitted. There is currently no discussion on whether color variations will be permitted.

③Photo

Photos should be submitted in black and white, but submitting photos is generally discouraged, as black and white photos are generally not clear enough.

9. Examination

Only formal examination will be conducted; no substantive examination will be conducted.

(1) Novelty

Since there is no substantive examination, part of the substantive examination is conducted during the formality examination (examination of novelty through a cross-check with domestic registered designs).

(2) Name of the item

During the formality examination, if there is a discrepancy between the priority certificate and the name of the product, the number of drawings, etc., the application will be rejected. However, recently, especially when determining the name of the product, the name of the product is determined as an application independent of the basic design.

The examiner will suggest a more appropriate product name and ask the applicant to revise it. If the product name is too broad in scope or too vague, the applicant will be asked to revise it to something more clear. If the applicant thinks the product name proposed by the examiner is inappropriate, he or she can discuss it with the examiner.

10. Registration Period

Once examination is complete, if all goes well, your application will be registered within 9 to 12 months from the filing date.

11. Release

(1) Amendment of regulations regarding the gazette

The 2013 amendment provides that, after registration, advertisement of a design registration shall be made in the "Official Journal" published by the Registrar instead of in the "Gazette". The Official Journal can be easily accessed and printed from the MyIPO website.

(2) Release postponed

Provisions for postponement of publication have not been adopted.

12. Opposition System and Invalidation Trials

There is no appeals system in place, and no plans to do so in the near future.

However, after registration, a design right may be invalidated through an invalidation trial.

13. Assignment of Design Rights

Please note that under the 2013 Amendment Act, a change in ownership of a design must be registered within six months of the change. If it is not, the court will refuse to award damages in an infringement case against the new owner unless it is deemed impractical to register the change within that time frame and the change is registered soon after the reason for the change ceases to exist.

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