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2024 MarsdenLR 2025
HIGH COURT MALAYA PENANG
SHENG WANG INDUSTRIES SDN BHD – Appellant
Versus
YOKOKO MERCHANDISE (M) SDN BHD – Respondent
[Civil Suit No: PA-22IP-1-2/2024]
A design must exhibit substantial differences from prior designs to qualify as novel under the Industrial Designs Act 1996; immaterial differences do not confer originality.
Headnote:(A) Industrial Designs Act 1996 - Sections 3(1), 12, 27(1)(a), and 34 - Claim for infringement of registered industrial design dismissed; counterclaim for revocation of registration allowed - Design not meeting statutory criteria of novelty; features deemed immaterial differences and common trade variants - Registration invalidated. (Paras 12, 27, 92)
(B) Infringement - Requirements for establishing infringement of registered design; necessity for proof of actual loss of profits; speculative damages not awarded. (Paras 85, 90)
Facts of the case:
The Plaintiff claimed infringement of its registered industrial design for a chair, while the Defendant counterclaimed for revocation, asserting that the design lacked novelty and was anticipated by prior designs.
Findings of Court:
The court found the Plaintiff's design did not exhibit any unique features compared to prior designs, concluding it was not registrable under the IDA 1996.
Issues: Whether the Plaintiff's design was novel and whether the Defendant infringed the design.
Ratio Decidendi: The court emphasized the need for substantial differences for registration; features that are common trade variants do not qualify as novel.
Result: Claim dismissed; counterclaim allowed; registration revoked.
JUDGMENT
Introduction
[1] The Plaintiff ("P") brings this action against the Defendant ("D") over the alleged infringement of its registered industrial design of a chair. In turn, D counterclaims for the revocation of the said industrial design.
[2] After a full trial, I dismissed P's claim and allowed D's counterclaim. Here are the grounds of my judgment.
Background Facts
[3] In 2023, D began manufacturing and selling a new model of chairs ("said chair"). D says that it drew inspiration from other existing designs, excluding P's design, for the creation of the said chair.
[4] On 18 October 2023, P vide its solicitors issued a notice to D claiming that the said chair infringes P's registered industrial design MY 16-01069-0101 ("said industrial design"). P demanded the cessation of all sales of the said chair.
[5] D refused to comply. D contends that the registration of the said industrial design is invalid and susceptible to revocation. Subsequently, P initiated the instant suit against D for infringement of the said industrial design.
[6] The said industrial design was registered by P on 20 October 2016. The registration of the said industrial design has been renewed by P until 20 October 2026.
[7] The statement of novelty in the Certificate of Registration of the said industrial states - "The novelty of the design resides in the shape and configuration of the article as shown in the accompanying representations."
[8] The said chair, by a coincidence according to D, shares similarities with the said industrial design. Particularly the randomly distributed oval holes on the backrest of the said chair, which P is claiming novelty.
[9] A side - by - side visual comparison of the two chairs is set out below.
[10] D's case is that the said industrial design was anticipated by prior designs. As such, it lacks the requisite novelty. Consequently, the registration of the said industrial design by P is invalid and ought to be revoked under s 27(1)(a) of the Industrial Designs Act 1996 ("IDA 1996").
Issues For Determination
[11] The crux of this matter is whether there has been an infringement of the said industrial design by D. Related to that is the issue of whether the said industrial design meets the statutory criteria for registration as a new industrial design under the law.
[12] My finding is that the said industrial design does not meet the statutory criteria for registration as a new industrial design under the law. Accordingly, the registration of the said industrial design by P is invalid and should be revoked.
[13] It follows that D is not guilty of infringing the said industrial design. This is by virtue of s 34 of the IDA 1996, which reads:
34. Defence in action for infringement
Any ground on which the registration of an industrial design may be revoked is available as a defence in an action for infringement of a registered industrial design."
[14] Here are my reasons.
The Prior Designs
[15] A graphic comparison between the said industrial design and the relevant prior designs registered in various countries that anticipate the said industrial design, are reproduced below.
The Law On Industrial Designs
[16] Under the IDA 1996, an industrial design is registrable if it fulfills the following requirements. Namely:
(a) it must qualify as an "industrial design" which is not dictated solely by functionality, as defined under s 3(1) of the IDA 1996;
(b) it must be "new", as defined under s 12 of the IDA 1996; and
(c) it must not be contrary to public order or morality, as stipulated under s 13 of the IDA 1996.
[17] Pursuant to s 12 of the IDA 1996, an industrial design is not considered new if it differs from prior designs which have been published in Malaysia or elsewhere before its priority date of application only in:- (a) immaterial details; or (b) features commonly used in the relevant trade.
[18] Section 12 of the IDA 1996 reads:
"12. Registrable industrial design
(1) Subject to this Act, an industrial design shall not be registered u
