Guthrie successfully defends rain gutter infringement claim

Malaysia

In Lee Chong Yee v Kumpulan Guthrie Bhd (Civil Suit D4-22-299-94), the Kuala Lumpur High Court has issued its decision in a case involving a UK registered design for a gutter forming panel (ie, a rain gutter).

Commonly used in Malaysian rubber estates, rain gutters are crescent-shaped objects made either of rubber, bitumen or plastic. They are attached to the trunks of rubber trees to prevent the tapping channels from getting wet. When fixed to the tree it forms a spiral shaped-hood, closely resembling the shape of the plaintiffs' design.

Lee Chong Yee and two others were joint owners of the UK design for a rain gutter. They alleged that Kumpulan Guthrie - a publicly listed company with a long history of owning and managing rubber estates in Malaysia - had been infringing their design since 1989 by using a similarly shaped gutter, known as the Chemara Disposable Rainguard. The plaintiffs sought general damages of M$5 million, as well as damages for loss of royalties and costs.

Guthrie raised a number of defences, including that:

  • the design was not new or valid as it was anticipated by at least two UK patents;

  • the Chemara Disposable Rainguard was a result of independent research and creation since 1978;

  • the shape or configuration of the plaintiffs' gutter was dictated by its function, in that it had to fit snugly around a tree trunk, thus the need for a crescent shape; and

  • the design lacked visual appeal as it had no aesthetic embellishment.

After a protracted trial, the high court ruled in favour of Guthrie, principally on the basis that the shape of the registered design was common to the trade and thus not novel. Further, the court found that Guthrie had succeeded in establishing the defence of prior creation.

Guthrie also obtained a declaration that no rights and/or privileges were acquired by the plaintiffs in Malaysia by virtue of the UK registration. The court awarded costs to Guthrie.

Teo Bong Kwang, Raja Darryl & Loh, Kuala Lumpur

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