IP Office clarifies extension of UK-registered design rights

Malaysia

Following a decision by the High Court of Malaysia, the Intellectual Property Office has sought to put an end to the confusion surrounding the extension of registered industrial design rights.

In December 2005 the High Court issued its ruling in Shachihata Incorporated v The Registrar of Industrial Designs (KLHC OS No D7-21-72-2005), holding that designs registered under the UK Registered Designs Act 1949 before the commencement of the Malaysian Industrial Designs Act 1996 on September 1 1999 may be extended for fourth and fifth periods of five years each in Malaysia (see Duration of UK-registered industrial designs extended).

However, the necessary amendments to the Malaysian act and the Malaysian Industrial Designs Regulations 1999 on the applicable extension fee for the fourth and fifth periods have not yet been made by the relevant authorities.

After seeking clarification from the Industrial Designs Registration Office, the legal department of the Intellectual Property Office has stated that the Industrial Designs Registration Office will accept applications for the fourth and fifth extension periods for designs registered under the UK act before September 1 1999 but after August 1 1989. This includes designs where the third extension period expired after the Malaysian Industrial Designs Act 1996 came into force on September 1 1999, as the Industrial Designs Registration Office has rejected any applications to extend such UK-registered designs for the fourth and fifth periods before the High Court decision.

The Intellectual Property Office has also stated that no extension fee is payable where an application is filed before the enforcement of the proposed amendments to the Malaysian act or the Industrial Designs Regulations 1999. Therefore, owners of UK-registered designs eligible for extension are advised to file extension applications before the implementation of the proposed amendments in order to avoid the filing fee.

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

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