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2025 MarsdenLR 2227
HIGH COURT MALAYA KUALA LUMPUR
CHONG TECK CHOY & ANOR – Appellant
Versus
BINA-SAFEE SDN BHD – Respondent
[Suit No: WA-22IP-34-06/2020]
The Plaintiff must prove the eye-appeal of an industrial design through evidence from real customers; failure to do so results in non-registrability under the Industrial Design Act.
Headnote:(A) Industrial Design Act 1996 - Sections 3(1), 12, and 24 - Claim for infringement of industrial design and passing off - Defendant contended that the design was not new and not registrable - Court held that the burden of proof lies on the Plaintiff to establish the eye-appeal element, which was not satisfied - Prior disclosures of similar designs were established, leading to the conclusion that the design was not new - Registration revoked under s 24 of the IDA 1996. (Paras 5, 11, 12, 18, 19)
(B) Burden of Proof - The Plaintiff must adduce evidence from real customers to establish the eye-appeal of the design - Failure to do so results in the design not qualifying as an industrial design under the Act. (Paras 11, 12)
Facts of the case:
The First Plaintiff claimed infringement of its industrial design registration for a warning tape, while the Second Plaintiff claimed passing off. The Defendant argued that the design was not new and not registrable under the IDA 1996, and sought rectification of the registration.
Findings of Court:
The Court found that the Plaintiff failed to establish the eye-appeal element and that the design was not new due to prior disclosures, leading to the revocation of the registration.
Issues: Whether the Plaintiff's industrial design is capable of registration and whether it is new as required by the IDA 1996.
Ratio Decidendi: The Court ruled that the Plaintiff did not meet the burden of proof to establish the eye-appeal element, and prior disclosures indicated that the design was not new, thus justifying revocation of the registration.
Result: Plaintiffs' claims dismissed; Defendant's counter-claim allowed.
JUDGMENT
Introduction
[1] The First Plaintiff's ("P1") claim is based on the alleged infringement of P1's Industrial Design ("ID") by the Defendant.
[2] The Second Plaintiff's ("P2") claim is based on the alleged passing off of P2's business as a manufacturer of warning tapes.
[3] The Defendant's defences are that:
(a) P1 is not the owner of P1's ID;
(b) the ID itself is not capable of registration; and
(c) the ID is not new, as required under the Industrial Design Act 1996 ("IDA 1996")
[4] The Defendant's defences in its Statement of Defence ("SOD") are also the basis of its counter-claim for rectification of P1's ID under s 24 of the IDA 1996.
Issues Before This Court
[5] The primary issue for determination is whether P1's ID is capable of registration and whether P1's ID is "new" as required by the provisions of the IDA 1996.
[6] Only designs that fall within the narrow definition of "industrial design" provided in s 3(1) of the IDA 1996 are registrable under the Act. The Act defines an industrial design as follows:
"Interpretation
3. (1) In this Act, unless the context otherwise requires-
"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 of which the article is intended by the author of the design to form an integral part."
[7] In the present case, P1 has claimed novelty to the article, with respect to the pattern and ornamentation.
[8] In Anchorsol Sdn Bhd v. Nehemiah Reinforced Soil Sdn Bhd ; [2008] 10 CLJ 49 , Ramli Ali J (as he then was) quoting Lord Morris of Borth-y-Gest in Amp Incorporated v. Utilux Pty Ltd [1972] RPC 103 held:
"The phrases 'appeal to' and 'judged solely by the eye' denote features which will or may influence choice or selection. The eye concerned will be the eye, not of the Court , but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question. This does not mean that the 'appeal' or the attraction must be to an aesthetic or artistic sense- though in some cases it may be. The features may be such that they gain the favour of or appeal to some while meeting the disfavour of others. Beyond being merely visible the feature must have some individual characteristic. It must be calculated to attract the attention of the beholder.
It is clear from the language of the above paragraph that Lord Morris of Borth-y-Gest meant that the 'person who may be deciding whether or not to acquire the finished article' or the 'attention of the beholder' is the purchaser of the design and not a disinterested person in the street. The fact that the product will ultimately be hidden from the public's view when the purchaser uses the product is not the determining factor when the Court is assessing the 'appeal to the eye'."
[9] The Defendant submits that it is Pi's burden to establish the eye- appeal element by adducing evidence from real customers for the "finished article" in question. In the present case, the article is the "detectable warning tape", of which Pi is the holder of registration RID0342 since 20 March 2014.
[10] P1 claims the novelty in RID0342 is in its pattern and ornamentation with regard to:
(i) 3 x 3 mm squares on the tape's surface; and
(ii) that there is no gap between the squares on the tape. P1 contends that the alleged infringing material sold by the Defendant (see Exhibit P2) infringes RID0342 in that it is identical to it. Exhibit P1 is a sample of Pi's tape using RID0342.
Finding Of Eye Appeal
[11] I am persuaded by the decision of the Court of Appeal in F&n Dairies (malaysia) Sdn Bhd v. Tropicana Products I
