8 May 2025
Introduction
Industrial design is a critical aspect of intellectual property that provides protection for the aesthetic features of products. In Malaysia, the Industrial Designs Act 1996 (“the Act”) governs the registration and protection of industrial designs. To be registrable, a design must satisfy specific requirements set out under the Act. This article explores these requirements and the intricacies involved, shedding light on the legal framework that ensures the protection of creative designs. In essence, there are three requirements for an industrial design to be registrable under the Act.
First Requirement: Meeting the Definition of an “Industrial Design”
The first requirement for a design to be registrable is that it must meet the definition of an “industrial design” as provided under Section 3(1) of the Act. According to this section, an “industrial design” encompasses features of shape, configuration, pattern, or ornament applied to an article by an industrial process or means, which, in the finished article, appeal to and are judged by the eye. Four key aspects emerge from this definition:
- Features of Shape, Configuration, Pattern, or Ornament
The terms “pattern” and “ornament” usually refer to two-dimensional features, while “shape” and “configuration” relate to three-dimensional features. In Kestos Ld v Kempat Ld (1935) 53 RPC 139 (ChD), Luxmoore J clarified that “shape” and “configuration” are effectively synonymous, as are “pattern” and “ornament.”
- Applied by Any Industrial Process
The shape, configuration, pattern, or ornament must be applied to the article through an industrial process. This contemplates the use of mass production techniques, such as machinery, in applying the design.
- Article Definition
Section 3(1) of the Act defines an “article” as “any article of manufacture or handicraft, and includes any part of such article or handicraft if that part is made and sold separately.” In Littlewoods Pools Ltd’s Application (1949) 66 RPC 309, it was held that an “article,” within the context of industrial design law, must serve a functional purpose beyond merely bearing the design.
Importantly, the statutory definition also allows a component of a larger item to qualify as an “article” in its own right, provided that the component is made and sold separately. This interpretation was affirmed in Sifam Electrical Instrument Co Ltd v Sangamo Weston Ltd [1973] RPC 899, where Graham J emphasized that for a part to be considered an article, its manufacture and sale must be distinct from those of the complete product.
Additionally, the phrase “article of manufacture” excludes naturally occurring objects, as these are neither manufactured items nor products of handicraft.
- Appeal to and Judged by the Eye
To qualify as an industrial design, the design must appeal to the aesthetic sensibilities of the consumer. In F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products, Inc [2013] MLJU 1591, the court held that the design must appeal to the customer’s eye, thereby excluding instances where the consumer selects a product based not on its appearance but on its perceived utility. Similarly, in Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd (2008) 1 LNS 576, the court interpreted the phrase “appeal to the eye and judged by the eye” as comprising two cumulative elements. First, the design must possess a special, peculiar, distinctive, significant, or striking appearance — something that catches the eye and, in that sense, appeals to it. Second, designs chosen solely for their utilitarian function, rather than for their visual appeal, fall outside the scope of industrial design protection. Notably, the court further clarified that it is immaterial whether the design will be used in a way that it is ultimately hidden from the view of the public; what matters is that the article meets the eye appeal requirement at the point of sale.
- Exclusions from Industrial Design
After discussing the four key aspects above, it is essential to note that the definition of “Industrial Design” under Section 3 of the Act specifically excludes three categories from qualifying as industrial designs.
Firstly, a method or principle of construction is not considered an industrial design. In Philips v Harbro Rubber Co [1920] 376 RPC 233, Lord Moulton explained that a registered design protects only the appearance or form of a product, not the way it is made or constructed. Attempts to extend the protection of registered designs to modes of manufacture have therefore rightly failed.
Secondly, features of shape or configuration dictated solely by the function of the article are also excluded. In Interlego AG v Tyco Industries Inc [1989] AC 217, the court held that if every feature of a shape is solely determined by the function the article is meant to perform, the exclusion applies. This is so even if the shape has aesthetic appeal. However, if some features are dictated by function while others are not, the exclusion does not apply.
Thirdly, features of shape or configuration that depend on the appearance of another article, forming an integral part of it, are excluded from registration. This is often referred to as the “must-match” exclusion. In Veresdale Ltd v Doerwyn Ltd [2015] 7 MLJ 836, the court considered whether components like the hood, front bumper, rear bumper, and grille of automobiles, which must align with the overall design of the vehicle could qualify as industrial designs. The court held that these parts were excluded because they were intended to form an integral part of the car’s design. In essence, if a component’s shape or configuration depends heavily on the appearance of the whole article, it is excluded under the “must-match” exclusion.
Second Requirement: Novelty
The second requirement for a registrable industrial design is that the design must be new. Section 12(2) of the Act outlines circumstances under which a design is not considered new. A design is not new if, before the filing date of the application, the design or a design that differs from it only in minor details or in features commonly used in the relevant trade — was either: (a) disclosed to the public anywhere in Malaysia; or (b) already included in an earlier application for registration filed in Malaysia by another person, and that earlier application led to a successful registration.
- What amounts to Disclosure?
In terms of what amounts to disclosure, the court in F&N Dairies (Malaysia) Sdn Bhd held that any form of disclosure is sufficient — whether by publication, use, or even oral communication.
Notably, Section 12(3) of the Act outlines two specific situations in which an industrial design is not considered publicly disclosed. First, if it was shown at an official or officially recognized exhibition within six months before applying for registration. Second, if someone other than the applicant disclosed it in breach of a confidential relationship within the same six-month period. This was confirmed in the case of Anchorsol Sdn Bhd, where the court ruled that confidential disclosures do not count as public disclosure.
In simple terms, if your design was displayed at a recognized exhibition or shared without your consent shortly before you applied, it will not count as being “publicly disclosed.”
- Must be Materially Different
In Anchorsol Sdn Bhd, the court emphasized that a design will not be considered novel merely because it is not identical to prior art. If the differences between the design and the prior art are limited to immaterial details or consist of features that are commonly used in the trade, the design will not meet the requirement of novelty.
In other words, a design must be materially different from what has already been disclosed or commonly used in the industry. Minor tweaks or standard variations are not enough to make it new.
Similarly, in Philips v Harbro Rubber Co, the phrase “features commonly used in the relevant trade” was interpreted to refer to design features that are part of common trade knowledge and are typically found in the class of articles to which the design applies. For instance, if it is common practice for running shoes to have or not have spikes in their soles, merely adding spikes to an otherwise standard running shoe would not render the design new or original.
Third Requirement: Not Contrary to Public Order or Morality
The third requirement is that the design must not be contrary to public order or morality. Section 13 of the Act explicitly excludes designs that violate these principles. This provision serves to prevent the registration of designs that may be offensive or harmful to societal norms.
Conclusion
Understanding the requirements for a registrable industrial design under the Act is crucial for creators and businesses looking to protect their intellectual property. By meeting the legal criteria, designers can secure registration and enjoy important benefits.
Registering your industrial design is vital as it grants you the exclusive rights to control how your design is used—whether through making, selling, importing, or offering it for commercial purposes.
This legal protection not only safeguards your creativity but also ensures you can fully capitalize on your design’s potential in the market, reinforcing the importance of registering industrial designs.
Written by Chan Jiunn Wah, Trainee Associate
This article is intended to provide general information and does not constitute legal advice. If you require further clarification and assistance, please feel free to contact us at info-cpkhon@cpkhon.com.
