Duration of UK-registered industrial designs extended
The Industrial Designs Registration Office issued a circular in 2005 stating that, on the advice of the Attorney General's Chambers, designs registered under the UK Registered Designs Act 1949 would not be extendible beyond three five-year terms under the Malaysian Industrial Designs Act 1996 (see Concern over conflicting advice on industrial designs registration). The circular, which contradicted an announcement made by the then secretary general and director general of the IP Corporation of Malaysia (now the Malaysian IP Office) at a dialogue with practitioners on March 27 2004, caused major uncertainty and anxiety among practitioners and owners of UK-registered designs.
However, in December 2005 the High Court ruled that industrial designs registered under the UK act before the Malaysian Industrial Designs Act came into effect on September 1 1999 are extendible for fourth and fifth terms of five years each. There is no indication that the Industrial Designs Registration Office will appeal against the decision. Interested parties are now awaiting further action from the Attorney General's Chambers to make the necessary amendments to the Malaysian Industrial Designs Act and/or the Industrial Designs Regulations 1999 (eg, to establish the filing fees for the fourth and fifth terms).
Michael Soo and Ng Kim Poh, Shook Lin & Bok Kuala Lumpur, Kuala Lumpur
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