JUDGMENT

Ramly Ali J:

[1] This is an appeal by the appellant, Anchorsol Sdn. Bhd. pursuant to s. 46 of the Industrial Designs Act 1996 (IDA 1996) in respect of the decision of the Registrar of Industrial Designs (the registrar) dated 29 January 2008 who dismissed the appellant's rectification application pursuant to s. 24(3) of the IDA 1996 to expunge Industrial Design Registration No. MY-03-00185 (Design 3 of 5) for 'Anchorage Lug' in the name of the respondent.

[2] The appellant had earlier applied to the registrar to rectify the register of the Industrial Design by expunging the Industrial Design Registration No: MY-03-00185 for 'Anchorage Lug' (design 3 of 5) (disputed design) in the name of the respondent. The appellant's basis for making such an application are summarised as follows:

(a) the disputed design is not an industrial design within s. 3 of the IDA 1996 as it has no aesthetic value and its design is dictated purely by function and thus cannot be registered as an industrial design;

(b) the disputed design is not new and therefore contrary to s. 12(1) of the IDA 1996 as the same has been disclosed to the public, and therefore the respondent cannot satisfy the statement of novelty requirement in s. 14(1)(c) of the same Act ; and

(c) the respondent or Lee Chee Hai is not the author and owner of the disputed design.

[3] The registrar however found that:

(a) the appellant's Omega Lug and disputed design on the whole differed although they carried out the same function;

(b) the disputed design is not dictated purely by function; and

(c) the disputed design had not been disclosed to the public prior to the application date of the disputed design and that the patent claims and specification contained in the agreement between Lai & Tham and the appellants were only known by the parties to the agreement.

[4] The rectification application by the appellant was dismissed by the registrar on 29 January 2008. Hence, this appeal to this court pursuant to s. 46 of the IDA 1996 .

Factual Background

[5] On 16 July 2001, one Lai Yip Poon and Tham Yoke Wah (Lai & Tham) jointly lodged an application for the grant of a patent pursuant to Patent Application No. PI 20013357 entitled "Anchoring means for retaining wall system" (patent application). Since the registrar's decision on 29 January 2008, the patent application has been granted. The patent was granted with effect from 30 May 2008 although the same was only received by Lai & Tham's Patent Agent on 8 July 2008.

[6] The invention identified in the patent application (now granted) is an "anchoring means for retaining wall systems" commonly known as the Omega Lug.

[7] Retaining walls are commonly built to prevent further degradation of the soil face. These walls are subjected to high pressure exerted by the soil behind the walls which may be caused by lateral movement of the soil, water temperature and shrinkage effects and seismic loads. When the load becomes too great, it may cause the collapse of the retaining wall.

[8] To prevent the same, reinforcement members are used where they typically absorb the stress from the earth and create friction during soil movement.

[9] The Omega Lug incorporates an anchoring means that is shaped almost like an Omega symbol and functions to attach a rod or tendon to the wall or soil system.

[10] The Omega Lug as used in the soil and wall consists of two large flanges at the base which are embedded into a wall and are designed so to provide a larger tributary area of reinforcement. The remaining par of the Omega Lug is a "U" shaped loop that is projected out of the wall and into the soil and this is connected to the rod or tendon which functions to absorb the stress from the soil.

[11] From the patent application (and the Patent now granted), Lai & Tham claimed to be the inventors/creators and owners of the Omega Lug. Lai & Tham claimed they were the first in time to author and invent the Omega Lug.

[12] On 31 July 2001, Lai & Tham granted to the appellant the excl