Concern over conflicting advice on industrial designs registration

Malaysia

The Industrial Designs Registration Office has issued a circular stating that, on the advice of the Attorney General's Chambers, designs registered under the UK Registered Designs Act may not be extended beyond three five-year terms. The new circular contradicts the announcement made by the then secretary general and director general of the Intellectual Property Corporation of Malaysia - now the Malaysian Intellectual Property Office - at a dialogue held with practitioners on March 27 2004.

Before the enactment of the Malaysian Industrial Designs Act, all industrial designs registered under the UK act were recognized and enforceable in Malaysia under the old statutes. Under the UK act registered designs are valid for 25 years. Following the enactment of the Industrial Designs Act, industrial designs must be registered in Malaysia in order to be recognized there. However, designs registered in the United Kingdom before the commencement of the Industrial Designs Act continue to be recognized in Malaysia.

According to the Industrial Designs Act, designs registered under the act will be valid for an initial term of five years with extension for two further five-year terms permitted.

The advice from the Attorney General's Chambers is inconsistent with the following provisions of the Industrial Designs Act:

  • the validity period of designs registered under the UK act should be governed by the UK act, under which registered designs are valid for 25 years. Section 49(2)(c) of the Industrial Designs Act stipulates that any design registration protected under the repealed predecessor statutes to the Industrial Designs Act (ie, the UK Designs (Protection) Act 1949, the UK Designs (Protection) Ordinance of Sabah and the UK Designs (Protection) Ordinance of Sarawak) continues to be in force and has the same effect as if the registration had been effected under the Industrial Designs Act;

  • Section 50(2) of the Industrial Designs Act stipulates that a certificate of registration granted under the UK act would have "the maximum period of validity accorded under the repealed laws". The words "period of validity" should be contrasted with the words "period of registration" used in Section 25(1) and 25(2) of the Industrial Designs Act; and

  • owners of designs registered under the UK act prior to the enactment of the Industrial Designs Act have a vested right to extend their respective registration to a maximum period of 25 years. It is trite law that a vested right would not be taken away by Parliament unless it is expressly stated in the statute or by necessary implication.

A party that is unhappy with a decision of the Industrial Designs Registration Office may appeal to the High Court under Section 46(1) of the Industrial Designs Act.

It is hoped that the Attorney General's Chambers will clarify its position on this issue in the light of the interpretation of the statute. The circular has caused uncertainty and anxiety among practitioners and owners of UK registered designs since the Industrial Designs Act came into effect on September 1 1999.

Michael Soo and Ng Kim Poh, Shook Lin & Bok, Kuala Lumpur

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