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2025 MarsdenLR 2191
HIGH COURT MALAYA KUALA LUMPUR
CHONG TECK CHOY & ANOR – Appellant
Versus
BINA-SAFEE SDN BHD – Respondent
[Suit No: WA-22IP-34-06/2020]
The court ruled that an industrial design must demonstrate eye appeal through consumer evidence and cannot be registered if it has been publicly disclosed before its application date.
Headnote:(A) Industrial Design Act 1996 - Sections 3(1), 12, and 24 - Claims of infringement of industrial design and passing off - The court examined the registration and novelty requirements under the IDA 1996, finding that the Plaintiffs failed to establish eye appeal and that the design was not new, thus permitting revocation of registration. (Paras 5, 11, 18, 19)
(B) Burden of Proof - The burden lies with the Plaintiff to demonstrate 'eye-appeal' through evidence from real customers, which was not fulfilled here. (Paras 11, 12)
(C) Novelty of Design - A design is not new if it or a similar design has been publicly disclosed before the application date, which was the case here. (Paras 13, 17)
Facts of the case:
The Plaintiffs claimed infringement and passing off related to a design for warning tapes, disputing the Defendant's claims that the design was not registrable or new.
Issues: Whether the Plaintiffs’ design is registrable under IDA 1996 and if it meets the criteria of being new.
Findings of Court:
The Plaintiffs did not prove 'eye-appeal' nor establish the novelty of the design; thus, the registration revocation was warranted.
Ratio Decidendi: The court reaffirmed the necessity of demonstrating eye appeal through real customer evidence and noted the prior public disclosures defeating the claim of novelty.
Result: Claims dismissed; Defendant's counter-claim allowed with costs awarded to the Defendant.
| Table of Content |
|---|
| 1. claims of design infringement and passing off. (Para 1 , 2 , 3 , 4) |
| 2. issues regarding registration capability of design. (Para 5 , 6) |
| 3. definition and assessment of eye-appeal. (Para 7 , 8) |
| 4. burden of proof for eye-appeal established. (Para 9 , 10 , 11 , 12) |
| 5. assessment of novelty in design registration. (Para 13 , 14 , 15 , 16 , 17) |
| 6. findings on eye-appeal and design novelty. (Para 18) |
| 7. registration revocation under s 24 of ida. (Para 19) |
| 8. dismissing claims and awarding costs. (Para 20) |
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 t
