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2013 MarsdenLR 2552
COURT OF APPEAL PUTRAJAYA
F&N DAIRIES (MALAYSIA) SDN BHD – Appellant
Versus
TROPICANA PRODUCTS INC & OTHER APPEALS – Respondent
[Civil Appeals No: W-02(IPCV)(W)-1913-08-2012 W-02(IPCV)(W)-1914-08- 2012 W-02(IPCV)(W)-1916-08-2012 & W-02(IPCV)(W)-1917-08-2012]
An industrial design must demonstrate novelty and eye-appeal to qualify for registration; a design is invalid if its features are dictated solely by function, as established under the Industrial Design Act 1996.
Headnote:(A) Industrial Design Act 1996 - Sections 3(1), 12(1), 12(2), and 27(1)(a) - Appeals concerning registered industrial design infringement and invalidation. Respondent filed suits for infringement of registered design - Appellants claimed invalidation of said design based on lack of novelty and eye-appeal, arguing design features dictated solely by function - Court found design not registrable due to lacking eye-appeal and being dictated by function; findings supported by evidence. (Paras 3, 13, 20, 19, 21, 37, 112-153)
(B) Appeal and Invalidation - Judicial interference in trial findings - Court emphasized need for valid registration of industrial designs to ensure protection. Resulting in allowances of all appeals with costs of RM200,000, RM300,000 and setting aside trial court's decisions. (Paras 152, 153)
| Table of Content |
|---|
| 1. overview of appeals and legal context (Para 1 , 2 , 3 , 4 , 5 , 6 , 7 , 8 , 9 , 11) |
| 2. parties' arguments regarding design validity (Para 10 , 12) |
| 3. court analysis of design infringement and functionality (Para 13 , 14 , 15) |
[1] There are four appeals, heard together before us. The appeals are:
(a) Appeal No : W-02(IPCV)(W)-1913-08-2012 (Appeal 1913);
(b) Appeal No : W-02(IPCV)(W)-1914-08-2012 (Appeal 1914);
(c) Appeal No : W-02(IPCV)(W)-1916-08-2012 (Appeal 1916); and
(d) Appeal No : W-02(IPCV)(A)-1917-08-2012 (Appeal 1917).
[2] These appeals by the appellants/defendants are against the whole of the judgment of the learned Judicial Commissioner handed down at the Kuala Lumpur High Court on 3 July 2012 where the learned Judicial Commissioner had in effect allowed the respondent/plaintiff s claims for infringement of the respondent/plaintiff s registered industrial design in the 624 Design by all the appellants/defendants in Appeal 1913, Appeal 1914 and Appeal 1916; as well as the respondent/plaintiff s application for invalidation and expungment of the appellants registered industrial design in the 855 Design in Appeal 1917.
Background Proceedings
[3] At the High Court, the respondent/plaintiff (Tropicana Products, Inc) had concurrently filed six suits comprising of four infringement suits and two invalidation suits which were related to the respondents registered 624 Design against different defendants. The six suits are as follows:
(a) Kuala Lumpur High Court Civil Suit No D-22IP-66-2010: Tropicana Products, Inc v. F&N Dairies (Malaysia) Sdn Bhd (Suit 66);
(b) Kuala Lumpur High Court Civil Suit No D5-22IP-59-2010: Tropicana Products, Inc v. F&N Beverages Manufacturing Sdn Bhd (Suit 59);
(c) Kuala Lumpur High Court Civil Suit No. D5-22IP-41-2010: Tropicana Products, Inc v. F&N Beverages Manufacturing Sdn Bhd (Suit 41);
(d) Kuala Lumpur High Court Civil Suit No. D-22IP-12-2010: Tropicana Products, Inc v. Freshie (M) Sdn Bhd & GCH Retail (M) Sdn Bhd (Suit 12);
(e) Kuala Lumpur High Court Civil Suit No. D-25IP-10-2010: Tropicana Products, Inc v. GCH Retail (Malaysia) Sdn Bhd (Motion 10); and
(f) Kuala Lumpur High Court Civil Suit No. D-25IP-1-2011: Tropicana Products, Inc v. Fraser and Neave, Limited (Motion 1).
[4] In "Suit 66", the respondent/plaintiff, a company incorporated in the United States of America, being the proprietor of the 624 Design (Multiple Malaysian Industrial Design Registration No MY-06-00624 with a certificate of registration bearing the date of 10 Februari 2006) alleged that the appellant/ defendant, F&N Diaries (M) Sdn Bhd has infringed its 624 Design by manufacturing, offering for sale, using for purposes of trade and commerce and selling its bottled product ("Sunkist Dash") using a bottle design which is an obvious or fraudulent imitation of the respondents 624 Design. The decision of the learned Judicial Commissioner in Suit 66 is now the subject matter in Appeal 1913.
[5] In "Suit 59", the respondent/plaintiff alleged that the appellant/defendant (F&N Beverages Manufacturing Sdn Bhd) has infringed its 624 Design by manufacturing, using for purposes of trade and commerce, offering for sale and selling its bottled product ("Fruit Tree") using a bottle design which is an obvious or fraudulent imitation of the respondents 624 Design. The learned Judicial Commissioner allowed the respondent/plaintiff s claim. The said decision of the learned Judicial Commissioner in Suit 59, is now the subject matter in Appeal 1914.
[6] In "Suit 41", the respondent/plaintiff alleged that the appellant/defendant (F&N Beverages Manufacturing Sdn Bhd) likewise, has infringed its 624 Design by manufacturing, using for purposes of trade and commerce, offering for sale and selling its bottled product ("Seasons") using a bottle design which is an obvious or fraudulent imitation of the respondents 624 Design. The learned Judicial Commissioner allowed the respondent/plaintiff s claim. The decision of the learned Ju
