Introduction
The question that our group have chosen is Question 3 which reads “The United Kingdom Industrial Design Act 1949 provides that a design can be registered if it is new and has individual character. Critically compare the requirements under the Malaysia Industrial Designs Act 1996 to those in the UK Act”. The breakdown in this paper are that we have discuss on The UK Registered Design Act 1949 and Malaysia Industrial Designs Act 1996 individually, its comparison and lastly the problems and solutions imposed to it.
Intellectual property alludes to production of the mind, for example, inventions; literary and artistic works; and images, names and symbols utilized in trade (commercials)[ What is Intellectual Property. Retrieved from http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf]. Intellectual property is partitioned into two classifications specifically industrial property which incorporates patents for invention, industrial designs, trademarks and geographical signs; and the second classification known as copyright which covers abstract works, (for example, books, sonnets and plays),films, music, aesthetic works (e.g., illustrations, artistic creations, photos and models) and structural outline. Rights identified with copyright incorporate those of performing specialists in their exhibitions, makers or phonograms in their chronicles, and supporters in their radio and TV programs.
Intellectual property rights resemble any other property rights.They permit owners, or proprietors, of patents, trademarks or copyrighted attempts to profit by their own work or interest in a creation. These rights are laid out in Article 27 of the Universal Declaration of Human Rights, which accommodates the privilege to profit by the assurance of good and material interests coming about because of initiation of logical, scholarly or imaginative creations. The significance of intellectual property was first perceived in the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886). The two bargains are managed and administered by the World Intellectual Property Organization (WIPO).
An industrial design alludes to the accessory or aesthetic parts of an article. A design may comprise of 3D highlights, for instance the shape or surface of an article, or its 2D highlights, for example, patterns, lines or color. Industrial designs are connected to a wide assortment of industrial products and handicrafts: from specialized and medical instruments to watches, adornments and other extravagance things; from house products and electrical apparatuses to vehicles and its composition structures; from material plans and recreation merchandise. To be secured under most national laws, an industrial design must be new or original and nonfunctional. That implies that an industrial design is essentially of a aesthetic nature, and any specialized highlights of the article to which it is connected are not ensured by the design registration . Notwithstanding, those highlights could be secured or protected by a patent.
UK REGISTERED DESIGN ACT
The Registered Designs Act 1949[ 1949 12, 13 and 14 Geo. 6 c. 88] is an act in the United Kingdom (UK) concerning copyright along with related rights, modern designs, patents and insurance of undisclosed information. The motivation behind the act was to solidify certain enactments identifying with enrolling designs. The Act recommends that where an application for the registration of a design has been surrendered or cannot be surrendered, the information recorded in compatibility of the registration will not be available to open for assessment. In June 2016 the United Kingdom voted to leave the European Union in an open submission. At present, the United Kingdom remains a part of the European Union state and no date has been set for its takeoff. Accordingly, until and unless to the extent that the United Kingdom leaves from being a part of the European Union, registered and unregistered Community design rights is applied thereof to the United Kingdom.
The legitimate structure of the United Kingdom has a moderately complex framework for the insurance of designs. There are namely five conceivable types of insurance accessible for parts of a design which consist of; UK registered designs, registered Community designs, UK unregistered design rights, unregistered Community design rights, and copyright. These types of insurance may ensure certain components of a design for both industrial and non-industrial applications.
The important essential enactment overseeing designs in the United Kingdom incorporates the Registered Designs Act 1949, the Copyright Act, Designs and Patents Act 1988, the EU Designs Directive, the EU Community Designs Regulation and the Intellectual Property Act 2014.
United Kingdom's unregistered design rights are accessible to the design of the shape or setup of the entire or part of an article whether inner or outer. This rejects surface embellishment. Thus, these rights also relates essentially to three-dimensional (3D) objects. To qualify, the design must be unique and not typical in the design field. In any case, neither one of the terms is characterized. The design must not have been carelessly duplicated from a pre existing design; yet gave that the design contrasts in a few regards from different designs inside a similar design field, it is probably not going to be viewed as typical.
Design rights are made consequently when the design is recorded in a design report or an article is made to that design, independent of when the design is first made accessible to people in general. The main holder of the design rights will be the maker of the design, or if the design was made over the span of work, the business. Span of security for Unregistered design rights have a most extreme insurance time of years from the finish of the date-book year in which the design is recorded, or years from the finish of the schedule year in which articles bearing the design were first advertised, except if the 15-year term lapses first.
There are some exclusion in the registered design rights which the highlights of a design are barred from insurance. Initially is that they are an 'absolute necessity fit' highlights as fit as a fiddle or design which empower the article to be associated with or put in, around or against another article so either article can play out its capacity. The second exclusion is that they are 'must-coordinate' highlights or highlights of shape or arrangement which rely upon the presence of another article of which the designer expects the article being referred to frame a fundamental part. Both of these arrangements are designed to restrict security in connection to save parts.
UK's registered design rights are acquired through the UK Intellectual Property Office (UKIPO). Registration can be acquired for a design identifying with all or a piece of an item, and as to its ornamentation, shape, setup and surface. As it were, registered designs secure both 3D and 2D designs. The law administering UK registered designs has to a great extent been harmonized with that governing registered Community design, in spite of the fact that there are procedural contrasts. A design must be new and have singular character to be registered.
The design must not be indistinguishable to any design which has just been made accessible to people in general anyplace on the planet before the application or need date. Designs are viewed as indistinguishable if their highlights vary just as to 'irrelevant points of interest'. It tends to be found on account of Sunstar v Dentaid[ ICD 0420] where the EU Intellectual Property Office Invalidity Division has held that designs which were on an openly accessible enroll in Japan and home to one of the world's most critical IP workplaces and could sensibly have turned out to be known.
Notwithstanding, declaration of a prior design can be marked down; the prior distribution of a design will be immaterial as indicated by Section 1B (6) (a) of the Registered Designs Act that gives if the design couldn't sensibly have turned out to be known before the pertinent date in the ordinary course of business to people carrying on business in the European Economic Area and spend significant time in the part concerned.
The design must have singular character, which implies that the general impression of the design created on the Informed User varies from the general impression delivered on such a client by any design which has been made accessible to the general population. This is expressed in Section 1B (3) of the Registered Designs Act.
The informed user is considered to be acquainted with the current design corpus, the nature of the item to which the design is connected or into which it is fused, the mechanical part to which it has a place and the designer's level of opportunity in building up the design. The informed user is additionally a standard user of articles that are of indistinguishable sort from the registered design. This can be found on account of Woodhouse UK Plc v Architectural Lighting Systems[ (2006) ECDR 11].
Other than that, the accompanying highlights are prohibited from registered design assurance. One of them is the highlights that are managed exclusively by their specialized capacity. This is given a thin understanding where on account of Landor and Hawa International Ltd v Azure Designs Ltd[ (2006) EWCA Civ 1285], it was held that the design must be the best way to accomplish that specialized capacity. Another component that is avoided is the 'must-fit' highlights that are important for the interconnection of the item to another item. This is likewise given a tight understanding to which the highlights must be replicated in their exact frame and measurements to allow the item to be mechanically associated with or set in, around or against another item so either item may play out its capacity.
Registration is particularly took into account designs of parts planned to be gathered into a mind boggling item. This is characterized in Section 1(3) of the Registered Designs Act as an item which is made out of no less than two replaceable segment parts allowing dismantling and reassembly of the item. The term complex item is conceivably wide, however is thought to incorporate motor vehicles and segments for such vehicles in restricted conditions.
In term of whether a design is new, there is an imperative exclusion in that any production by the designer within a year time span going before the need date regarding the application is marked down. As it were, a candidate can test its design in the commercial center before choosing whether to enlist the design, gave that the design application is filed within a year of first production.
United Kingdom's registered design is inexhaustible at regular intervals, up to a maximum of 25 years. The design application can be filed by the creator of the design or by a business where the design is made by a worker over the span of his or her work. The candidate must likewise be the rights holder where the United Kingdom design rights subsist in the design.
It is conceivable to enlist online for single or various designs. Supporting design outlines ought to be in JPEG, GIF or TIFF format. On documenting the application, the candidate must give its full name and address, illustrations of the design, which can be line drawings, computer-aided designs or photographs and details of the product to which the design is applied. In any case, this does not confine the insurance given by the design to that item. The candidate can likewise give a concise depiction of the design. The ongoing Supreme Court choice in PMS International Limited v Magmatic Limited[ (2016) UKSC 12] underlines the significance of the right distinguishing proof and determination of the most suitable delineations to help a design application. Various designs can be canvassed in a solitary application. The UKIPO official expense is £60 for the principal design and £40 for each extra design secured by a similar application.
The candidate can ask for conceded distribution for a most extreme of a year when documenting the application. There is an expanded distribution expense of £40 for a solitary design and £20 for each extra design. This empowers the candidate to anchor a recording date, yet the application won't be registered until after production.
The UK design application takes around multi month to continue to registration. Examination is limited to customs; there is no substantive examination in connection to curiosity or individual character. Notwithstanding, it is conceivable to apply to discredit a registered design at the UKIPO on the accompanying grounds of the design does not qualify as a registrable design under Section 1(2) of the Registered Designs Act. Also, it is conceivable to apply to nullify a registered design at the UKIPO if the design isn't new or needs singular character. At that point, it is conceivable to apply to discredit a registered design at the UKIPO when the design is managed exclusively by specialized capacity and is in opposition to public policy or standards of ethical quality. At last, it is conceivable to apply to refute a registered design at the UKIPO if an outsider has rights that could disallow utilization of the design under trademark or copyright law or by ideals of custom-based law rights in passing off.
A registered design is an imposing business model right and the rights holder has the restrictive appropriate to utilize the design and keep outsiders from utilizing a design that does not create an alternate generally speaking impact on the informed user. Actually, unregistered design rights holders can keep the duplicating of the design by an outsider with the point of economically creating articles that are indistinguishable or generously like the design.
On account of both registered and unregistered design rights, the petitioner may look for harms or a record of profits or a directive forestalling further encroachment or a request for conveyance up or destruction of the encroaching articles.
Infringement proceeding can be acquired England and Wales under the steady gaze of the courts, including the IP Enterprise Court. This court is particularly designed for nearly minimal effort, streamlined procedures. In any case, there are tops on the level of harms and costs that can be acquired.
Both registered and unregistered design rights can be assigned, licensed or mortgaged. A registered design can be assigned by written agreement, yet this must be signed by or on behalf of the assignor. The assignment must be recorded at the UKIPO. Third parties are qualified to acquire a license to utilize unregistered design rights during the last five years of the design right's term. The prospective licensee can bring court proceedings to settle the terms, including the royalties to be paid for the license. It is redundant to record a license in connection to a design registration. In any case, if the permit isn't recorded, any assignee of the rights in the design may not be bound by that licensee's rights.
This was talked about in the case of Lambretta v Smith[ (2005) RPC 6]. It was held that in deciding the design field, a sensibly expansive approach ought to be embraced and includes the sort of design with which a notional designer of the article concerned would be well-known.
MALAYSIA REGISTERED DESIGNS
Introduction
The protection of the designs of industrially created articles in Malaysia are monitored by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which is enforced on 1 September 1999. Under this registration regime, the owner of an industrial design may, upon filing and successfully completing an application, register the design in respect of a specified article with the Registrar of Industrial Designs.
An industrial design made of pattern, configuration, shape and also ornament connected to an article by any mechanical procedure or means, being highlights which, in the completed article advance to and are made a decision by the eye. An article implies any article of fabricate or handiwork, and incorporates any piece of an article that is made and sold independently[Alexander Bayntun-Lees, 'South-East Asia IPR Basics Series: Industrial Designs In Malaysia' (Your IP Insider, 2018) <http://www.youripinsider.eu/south-east-asia-ipr-basics-series-industrial-designs-malaysia/> accessed 13 September 2018] Examples of articles the designs that can be registered include furniture, toys, mobile telephones, electronic gadgets and appliances, household utensils, bottles, cases, carpets, wallpaper and textiles.
The definition that "industrial design" in the Act carry particularly prohibits a strategy or rule of development, which perceives that the security presented is limited to the tasteful appearance as opposed to any specialized viewpoints that are more appropriate for patent policy.Also excluded from the legal definition of an industrial design are features of shape or configuration of an article which are (1) dictated solely by the function which the article has to perform, or (2) dependent upon the appearance of another article of which the article is intended by the designer to form an integral part. These exclusions are often referred to as the "must fit" and "must match" exclusions, respectively. They have been the subject of judicial comment in the United Kingdom.
The reason for these exclusions is to allow for inter-operable products to be marketed and to prevent monopolies from being created over articles such as automobile spare parts. It should be noted that while such excluded features shall not be taken into account when assessing the ability of a design to be registered, the existence of other novel features that are not so excluded may qualify the design for registration.The layout design of an integrated circuit certainly cannot be registered under the Industrial Designs Act 1996.
Qualification for protection
An industrial design that meets the above definition qualifies for protection which is not contrary to public order or morality and it is "new". For the purposes of registration, a design is not considered to be "new" if before the priority date of the application, it or a similar industrial design was disclosed to the public anywhere in Malaysia (so-called "local novelty"), or was the subject-matter of another registration in Malaysia having an earlier priority date and made by a different applicant.Although registration is for the design applied to a particular article that is specified in the application, novelty is assessed based on the design per se and so can be destroyed by the prior application of the same design to a different article[ 'Protecting And Enforcing Design Rights: Malaysia | Lexology' (Lexology.com, 2018) <https://www.lexology.com/library/detail.aspx?g=24c5b27d-b673-4001-b459-bb02b293f189> accessed 13 September 2018].
To cater for the fact that designers and industrialists often exhibit new designs at trade fairs and exhibitions prior to industrial exploitation or applying for registration of the designs, the Act specifically provides that an industrial design is not deemed to have been disclosed to the public solely by reason of the fact that within six months before the filing of an application for its registration, the design appeared in an official or officially recognized exhibition.A design is also not considered to have been disclosed to the public solely by reason of the fact that within six months prior to the filing date of an application for its registration, it was disclosed by a person other than the applicant or his predecessor in title, as a result of an "unlawful act" committed by that other person or another person.
Application for registration
An application for the registration of an industrial design may be made by the owner of an industrial design. In brief, an application is initiated by submitting to the Intellectual Property Corporation of Malaysia (MyIPO) is a completed request form (ID Form 1) signed by the owner or his duly appointed registered industrial design agent which is six identical representations of the industrial design, normally in the form of drawings or photographs showing several views of the design applied to the article in question.unless the design is for pattern or ornament applied to a textile article, wallpaper or the like, a Statement of Novelty setting out the features of the design for which the owner claims novelty; and the prescribed official fee(s).
Various detailed requirements that must be met either at the outset, or before an application can proceed to registration, are set out in the Industrial Designs Act and Regulations. For this reason, it is strongly recommended to engage a registered industrial design agent to advise you on the protection of an industrial design and to represent you before the Registrar of Designs when your application is filed and examined. Many members of MIPA are registered industrial design agents.
Term of protection
The initial registration lasts for a period of five years from the filing date of the application. The period of registration may be extended for two further consecutive terms of five years each on payment of the prescribed official fees, for a total period of protection of fifteen years.
Copyright protection of designs
Previously, there was some scope for industrial designs to be protected under the law of copyright, for example as three-dimensional representations of two-dimensional works. In line with the coming into force of the Industrial Designs Act 1996, however, the Copyright Act 1987 was amended to eliminate dual protection by copyright as well as design registration. The amended Copyright Act particularly gives that copyright does not subsist in any enrolled registered industrial design. moreover, copyright in any modern plan which is fit for being enrolled yet has not been so enlisted, consequently stops when any article to which the outline is connected has been recreated in excess of 50 times by an industrial process, by the proprietor of the copyright, or his license.Unlike the United Kingdom, Malaysia does not provide any specific protection for unregistered designs.
PROBLEMS AND ITS SOLUTION
UK Registered Design Act 1949.
Identifies industrial design as ‘Design Right’. According to S.8 of the UK Registered Design Act 1949 (hereafter referred to as ‘The Act’), following subsection (1) which states the design right exists for the first instance for a period of 5 years from the date of the registration of the design. According to S.8(2) of The Act, after the first 5 years of the date of registration of the act, the period of design right may be extended by term of 5 years for each term by applying to the registrar for an extension and paying the prescribed renewal fee. By looking at the law above, it showed that the ‘Design Right’ automatically protects your design for 10 years after it was first sold or 15 years after it was created depending on which one is the earliest. Basically, design right restricts someone else to use your design or even attempt to copy your design. It must be noted that the design right only applies to the shape and configuration (how different parts of a design are arranged together) of objects. The objective of registration of a design is to protect it’s 2-dimensional designs. The licence of right can be sold to another person in the final 5 years. Even though the UK has exited European Union acted on June 2016, it’s law structure still very much relied on EU’s structure. Designs is known as ‘unregistered community designs’ and is given 3 years protection from copying.[ “WIPO Investigation Policy” The World Intellectual Property Organization (WIPO) 292] [ Government Digital Service, “Design Right” (GOV.UKSeptember 23, 2015) <https://www.gov.uk/design-right> accessed September 16, 2018]
Industrial Designs Act 1996 (Act 552).
There are a few amendments to the industrial design act in Malaysia, namely regarding the requirement of novelty and the period of registration. According to S.12(2)(a) of The Act, the threshold is set higher for the design to be registered. However, an assessment of novelty on a global basis will not be applied retrospectively to cases where the design has already been registered and legal proceedings are pending. The period of registration existing in S.25 of The Act shall come into filling date of the industrial design application and shall be existing for an initial 5 years and after that it shall be renewed every 5 years to a maximum period of 25 years. Prior to 2013, the duration of protection is 15 years. Thus, I believe that although the period had already been extended, I believe that it needs further extension until 35 years or more because I believe that the effort needed to create such design is tremendous and it should be greatly acknowledge. The next thing to look at is the duration of application of registration. It is as off status quo 6 months. I personally believe that it should at least minimally be 12 months preceding the date of an application for registration[ “AMENDMENTS TO THE INDUSTRIAL DESIGNS ACT 1996 – SKRINE” <http://www.skrine.com/amendments-to-the-industrial-designs-act-1996> accessed September 16, 2018]. Another suggestion that should be highlighted is S.35 of The Act is regarding silent-ness of remedy of infringement. I highly suggest that monetary compensation should be granted and also injunction to prevent infringement. [ Section 35 of the Industrial Designs Act 1996]
Conclusion
There are a few convincing reasons to ensure the protection of an intellectual property. Firstly, the advancement and prosperity of humankind lay on its ability to make and create new works in the zones of innovation and culture. Secondly, the lawful insurance of new manifestations empowers the dedication of extra assets for encourage advancement. Thirdly, the advancement and assurance of intellectual property goads monetary development, makes new employments and enterprises, and upgrades the quality and pleasure throughout everyday life. An effective and fair intellectual property framework can assist all nations with realizing intellectual property's potential as an impetus for financial improvement and social and social prosperity. The intellectual property framework helps strike a harmony between the interests of pioneers and general society enthusiasm, giving a domain in which inventiveness and creation can prosper, to serve all.
In summarizing the whole assignment, we have came to a conclusion that the legislation that significantly governs the protection of Industrial design in Malaysia is the Industrial Designs Act 1996 which came into force on 1st September 1999. Before this, industrial designs were protected in Malaysia by registering the design in the United Kingdom. In light to the definition of the Industrial design, it relates to the features of shape, configuration, pattern or ornament applied to an article by any industrial process..
The criteria of a design is that it must have features of shape, configuration, pattern or ornament which are new and original.On the point of novelty, Malaysian industrial design law has a local novelty standard, in that the design must not have been disclosed to the public anywhere in Malaysia or elsewhere in the world before being the priority date or the date of application for registration in Malaysia, in respect of the same article or any other article. It should also not be recorded in the Register of Designs. The applicant is required to include a “statement of novelty” in the registered design application.
Applications for priority has to be made within six months from the earliest date of filing. The original duration of term of registration for a Malaysian design is 5 years from the filing date of the application for registration. The application can be renewed for four times of a further five year periods, giving it a maximum term of 25 years. The principle of construction, features of shape or configuration, features of shape or configuration which is dependent on the appearance of another article, of which the first article is intended by the designer to form and integral part and; the designs for an article where appearance is immaterial, in the sense that aesthetics are not normally taken into account to any material extent by persons using those kind of articles are excluded from industrial design registration in Malaysia.