Novelty requirement territorial, confirms High Court

Malaysia

In Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (Case [2005] 3 MLJ 30, March 22 2005), the High Court has dismissed the plaintiff's application for an interlocutory injunction preventing the defendant from selling certain types of motorcycle in Malaysia. However, the court also rejected the defendant's argument that the plaintiff's designs for its motorcycles were not novel.

Japanese company Honda Giken Kogyo Kabushiki Kaisha applied for an interlocutory injunction against Allied Pacific Motor based on the alleged infringement of (i) five industrial design registrations owned by Honda for the Honda Wave 125 motorcycle by Allied's Comel Manja JMP 125 motorcycle, and (ii) Honda's copyright in drawings of the Honda EX5 Dream motorcycle by Allied's Comel Manja JMP 100 motorcycle. The designs were registered on December 7 2000. The drawings were created by Honda in Japan and first published in Thailand.

In dismissing Allied's contention that the designs were not new as vehicles of a similar design had been sold in Thailand prior to Honda's application to register the designs in Malaysia, the High Court ruled that the novelty requirement in the Industrial Designs Act 1996 is territorial. Therefore, prior disclosure of designs outside Malaysia is irrelevant. In holding that Honda's designs were valid, the court noted that there were many similarities between the Wave 125 and JMP 125 motorcycles.

Turning to the copyright claim, the court applied the Copyright (Application to Other Countries) Regulations 1990 and held that although the drawings were first published in Thailand, they were entitled to copyright protection in Malaysia (subject to eligibility under the Copyright Act 1987). The court stated that the drawings were protected by copyright in Malaysia and were similar to Allied's JMP 100 end product.

The court concluded that there were serious questions that needed to be resolved at full trial. However, the court stated that the grant of an injunction pending final disposal of the suit would have a negative and perhaps irreversible impact on Allied, as an injunction would affect third parties and the government. The court also ruled that damages for loss of profits would be an adequate remedy for Honda should its claims succeed at trial. The court further observed that if Allied's assertion that the JMP 125 motorcycle had been taken off the market was true, the substratum of Honda's application would have dissipated and become academic.

Michael Soo, Shook Lin & Bok Kuala Lumpur, Kuala Lumpur

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