INDUSTRIAL DESIGNS ACT 1996

LAWS OF MALAYSIA ONLINE VERSION OF UPDATED TEXT OF REPRINT Act 552 INDUSTRIAL DESIGNS ACT 1996 As at 1 January 2013 2 INDUSTRIAL DESIGNS ACT 1996 Date of Royal Assent… … … … … … …13 September 1996 Date of publication in the Gazette… … … 26 September 1996 Latest amendment made by Act A1140 which came into operation on … … … … … … … … … 3 March 2003 PREVIOUS REPRINTS First Reprint … … … … … … … … … … 2002 Second Reprint … … … … … … … … … 2006 3 LAWS OF MALAYSIA Act 552 INDUSTRIAL DESIGNS ACT 1996 ARRANGEMENT OF SECTIONS PART I PRELIMINARY Section 1. Short title, commencement and application 2. Extent of application 3. Interpretation PART II ADMINISTRATION 4. Registrar, Deputy Registrars and Assistant Registrars 5. Industrial Designs Registration Office 6. Register of Industrial Designs 7. Notice of trust 8. Inspection of Register 9. Certified copies to be evidence PART III REGISTRATION OF INDUSTRIAL DESIGN 10. Ownership of registered industrial designs 11. Right to apply and obtain registration 12. Registrable industrial design 13. Industrial design contrary to public order or morality 13A. Certain registrations not to be extended or restored 4 Laws of Malaysia ACT 552 Section 14. Application for registration 15. Multiple application 16. Filing date 17. Priority date and right of priority under treaty or convention 18. Withdrawal of application 19. Amendment of application 20. Division of application after amendment 21. Examination 22. Registration and publication 23. Registration of the same industrial design in respect of other articles 24. Rectification of Register PART IV PERIOD OF REGISTRATION 25. Period of registration 26. Restoration of lapsed registration 27. Revocation of registration and grant of compulsory licence 28. Order of Court PART V RIGHTS OF OWNER, ASSIGNMENT AND TRANSMISSION 29. Rights of owner are personal property 30. Registration of assignment, transmission or other operation of law 31. Joint ownership PART VI INFRINGEMENT 32. Infringement of registered industrial design 33. Infringement proceedings 34. Defence in action for infringement Industrial Designs Section 35. Remedies for infringement PART VII OFFENCES 36. Falsification of Register, etc. 37. False representation of registration 38. Use of title “Industrial Designs Registration Office” 39. Offences by body corporate PART VIII OTHER POWERS OF THE REGISTRAR 40. Amendment of registered industrial design 41. General powers of Registrar 42. Exercise of discretionary power 43. Extension of time PART IX MISCELLANEOUS 44. Service by post 45. Agent 46. Appeal 47. Regulations 48. Convention countries 49. Repeal and saving provisions 50. Transitional 5 7 LAWS OF MALAYSIA Act 552 INDUSTRIAL DESIGNS ACT 1996 An Act to provide for the registration of industrial designs in Malaysia and for matters connected therewith. [1 September 1999, P.U. (B) 304/1999] BE IT ENACTED by the Seri Paduka Baginda Yang di-Pertuan Agong with the advice and consent of the Dewan Negara and Dewan Rakyat in Parliament assembled, and by the authority of the same, as follows: PART I PRELIMINARY Short title, commencement and application 1. (1) This Act may be cited as the Industrial Designs Act 1996 and shall come into force on such date as the Minister may, by notification in the Gazette, appoint. (2) This Act shall apply throughout Malaysia. Extent of application 2. This Act shall apply to applications for the registration of industrial designs made after the commencement of this Act and to registrations of industrial designs made on such applications. Interpretation 3. (1) In this Act, unless the context otherwise requires— 8 Laws of Malaysia ACT 552 “appointed date” has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617]; “article” means any article of manufacture or handicraft, and includes any part of such article or handicraft if that part is made and sold separately but does not include an integrated circuit or part of an integrated circuit within the meaning of the Layout-Designs of Integrated Circuits Act 2000 [Act 601], or a mask used to make such an integrated circuit; “Assistant Registrar” means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection 4(2) or (3); “author” means the person who creates a design; “convention country” means a country in respect of which there is in force for the time being an order under section 48 declaring it to be a convention country for the purposes of this Act; “Corporation” means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002; “Court” means the High Court or a judge thereof; “Deputy Registrar” means the person appointed or deemed to have been appointed to be a Deputy Registrar under subsection 4(2) or (3); “industrial design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include— (a) a method or principle of construction; or (b) features of shape or configuration of an article which — (i) are dictated solely by the function which the article has to perform; or (ii) are dependent upon the appearance of another article Industrial Designs 9 of which the article is intended by the author of the design to form an integral part; “legal personal representative”, in relation to a deceased person, means a person to whom probate of the will of the deceased person, letters of administration of the estate of the deceased person or other like grant, has been granted whether in Malaysia or elsewhere; “Minister” means the Minister for the time being charged with the responsibility for intellectual property; “owner” means the person who is registered as the owner of the registered industrial design or, if there are two or more such persons, each of those persons; “original owner” has the meaning assigned to it by section 10; “prescribed” means prescribed by or under this Act or any regulations made under this Act, and where no mode is mentioned, means prescribed from time to time by order published in the Gazette; “Register” means the Register of Industrial Designs kept under this Act; “registered” means registered under this Act; “registered industrial design” means an industrial design registered under this Act; “Registrar” means the Registrar of Industrial Designs as designated in subsection 4(1); “representation”, in relation to an article to which an industrial design is applied, means a drawing, tracing or specimen of the article to which the industrial design is applied or a photograph of such drawing, tracing or specimen; “set of articles” means a number of articles that are of the same general character and ordinarily on sale together, or intended to be used together, being articles to each of which there is applied an industrial design that is the same as, or which differs only in immaterial details or in features commonly used in the relevant trade from, the industrial design applied to the other articles or to any of them; 10 Laws of Malaysia ACT 552 “statement of novelty”, in relation to an industrial design, means a statement relating to the representation of an article to which the industrial design is applied that indicates those features of the representation in respect of which novelty is claimed. (2) A reference in this Act to an article shall be read as including a reference to— (a) a set of articles; (b) each article in a set of articles; and (c) both a set of articles and each article in that set, as the case requires. PART II ADMINISTRATION Registrar, Deputy Registrars and Assistant Registrars 4. (1) The Director General of the Corporation shall be the Registrar of Industrial Designs. (2) The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Industrial Designs, Assistant Registrars of Industrial Designs and other officers as may be necessary for the proper administration of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3). (3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection (2). (4) Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this Act appointed or authorized or required to be done or signed by the Registrar may be Industrial Designs 11 done or signed by any Deputy Registrar or Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar. (5) The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence. Industrial Designs Registration Office 5. (1) An Industrial Designs Registration Office and such number of branch offices of the Industrial Designs Registration Office as may be necessary for the purposes of this Act shall be established. (2) (Deleted by Act A1140). (3) (Deleted by Act A1140). (4) Any application or other document required or permitted to be filed at the Industrial Designs Registration Office may be filed at any branch office of the Industrial Designs Registration Office and such application or other document shall be deemed to have been filed at the Industrial Designs Registration Office. Register of Industrial Designs 6. (1) The Registrar shall keep and maintain a register called the Register of Industrial Designs. (2) There shall be entered in the Register— (a) the names and addresses of owners of registered industrial designs; (b) notices of assignment and of transmissions of registered industrial designs; and (c) such other matters as may from time to time be prescribed or as the Registrar may think fit. (3) The Register shall be kept in such form and on such material as may be prescribed. 12 Laws of Malaysia ACT 552 Notice of trust 7. Notice of a trust whether express, implied or constructive shall not be entered in the Register or be accepted by the Registrar. Inspection of Register 8. (1) The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed. (2) A certified true copy or extract of any entry in the Register sealed with the seal of the Registrar shall be given to any person requiring the same on payment of the prescribed fee. Certified copies to be evidence 9. (1) The Register shall constitute prima facie evidence of all matters required or authorized by this Act to be entered therein. (2) The Registrar may supply a copy of or an extract from— (a) any entry or document in the Register; or (b) a document or publication in the Industrial Designs Registration Office, certified by writing under his hand and seal to be a true copy or extract. (3) A copy or extract so certified and sealed shall be admissible in evidence as of equal validity with the original in all courts and proceedings without further proof or production of the original. (4) The Registrar may certify, by writing under his hand and seal— (a) that an entry, matter o