JUDGMENT

Hamid Sultan Abu Backer JC:

[1] This is my judgment in respect of the plaintiff's claim that the defendants have infringed its registered industrial design No. MY-03-00072 and the defendant's counterclaim inter alia for revocation of the design. At the close of submission, the defendant informed court that they are not pursuing their counterclaim for defamation and malicious/injurious falsehood.

Brief Facts

[2] The plaintiff and defendants are manufactures and trader of stationery products. The plaintiff had instructed its manager (PW1) to design a new and simple pencil lead case/casing. PW1 is said to have designed on 15 December 2002. A sketch done by PW1 which was said to be the design was only produced during the trial and marked as exh. P12. The said design was registered through an intellectual property consultant on 7 February 2003. And subsequently production and sales has commenced. Sometime in July 2006, the plaintiff found that the defendant was selling its pencil leads in a lead case copying the same design as that of the plaintiff.

[3] The defendant's defence and counterclaim at the date of trial in essence was that (i) the design is not new as stated in the Industrial Designs Act 1996 (IDA 1996) ; (ii) it ought to be removed under s. 24 IDA 1996 ; (iii) it ought to be revoked pursuant to s. 27(1)(a) and (b) of IDA 1996 ; (iv) that the said design was applied for in contravention of s. 12 of the Act (it not being new as at the priority date of filing of 7 February 2003); (v) and the registrar of Industrial Designs was already notified of this counterclaim by the defendant filing form ID7, pursuant to reg. 28(2) of the Industrial Designs Regulation 1999 .

Preliminaries

[4] Two witnesses gave evidence for the plaintiff and three for the defendants. PW2 was the main witness for the plaintiff; he said he designed it but only produced during trial a rough sketch in an unintelligible manner of the said design in a rough paper with a hand written date imprinted on the top right hand corner of the paper with the date being 15 December 2002. The defendant in this case attempted to show by exh. D13 that the said design of the plaintiff was already in the market for sales by the plaintiff as early as 1 August 2002. The plaintiffs did not call the consultant or the person who prepared the mould for the design to give evidence, notwithstanding the fact that the defendants in its pleading has put a material challenge to the existence of the design before the priority date.

[5] The plaintiff and defendant relied inter alia on the following cases namely: (a) Abraham Ho Ah Loke v. William Manson-Hing ; (b) Eastern & Oriental Hotel [1951] Sdn Bhd v. Ellarlous George Fernandez & Anor & Another Case ; (c) Aik Ming (M) Sdn Bhd & Ors v. Chang Ching Chuen & Ors & Another Case, [1995] 2 MLJ 770 ; (d) Charles Henry Nevill and Others v. Jogn Bennet and Sons [1898] RPC 412; (e) Megnaway Enterprise Sdn Bhd v. Soon Lian Hock (No 2); [2009] 3 MLJ 525; [2009] 8 CLJ 130 ; (f) Morello Sdn Bhd v. Jaques (International) Sdn Bhd; [1995] 1 MLJ 577; [1995] 2 CLJ 23; [1995] 1 AMR 873 ; (g) Arensi-Marley (M) Sdn Bhd v. Middy Industries Sdn Bhd; [2004] 4 MLJ 46; [2004] 8 CLJ 20; [2004] 4 AMR 481 ; (h) Golden Cresent Trading Sdn Bhd v. Alpine Auto Access Sdn Bhd; Pendaftar Rekabentuk Perindustrian (Interested Party), [2008] 9 CLJ 317 ; (i) Cartwright v. Coventry Radiator Company [1925] RPC 351, 357; (j) Heinrichs v. Bastendorff [1893] RPC 160; (k) Guan Teik Sdn Bhd v. Hj Mohd Noor Hj Yakob & Ors; [2000] 4 MLJ 433; [2000] 4 CLJ 324 ; (l) Armagas Ltd v. Mundogas SA [1985] Llyods's Law Report 1; (m) Bayer Aktiengesellschaft & Anor v. F E Venture Sdn Bhd and Third Party ; (n) Teh Teik Boay v. Chuah Siak Loo ; (o) Besolan International Limited & Ors v. South Strong Industries Sdn Bhd ; (p) Mohamed Alias v. PP .

Industrial Design And Jurisprudence Relevant To The Case (See Narayan 2009)

[6] The jurisprudence relating to Industrial Design has been set out by t