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Malaysian Industrial Designs-the Courts adopt an objective approach? A case note on Arensi-Marley (M) v Middy Industries

A recently reported Malaysian High Court decision has demonstrated that the Malaysian courts will maintain the principle of the court not deferring to the opinion of witnesses as to the issue of novelty, but make a determination based on the visual impression of the judge.

In the case Arensi-Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 4 MLJ 46, the Applicant was a manufacturer of uPVC gutters who claimed to own the copyright in the design of the gutter system discovered that the Respondent in the case had registered an industrial design (both in Malaysia and the UK) which it claimed was a substantial reproduction of their copyright and so sought to invalidate the design and have it expunged from the Malaysian Register of Industrial Designs. The Respondent contended that its design was significantly different from the Applicant’s design.

On the merits of the matter, the Court considered the Applicants submission that the features of the Respondent’s design that were different from the Applicant’s namely the non-closure of the upper ends of the sides of the gutter and the external longitudinal ribs across the sides were common variants in the trade and the Respondent should not be allowed to monopolize them by means of a design registration.

However the Court found that after examining the Applicant’s design, the Respondent’s registered design, other rain gutters available in Malaysia and rain gutter designs registered in the UK, that it was of the opinion that the features concerned in the Respondent’s industrial design were the very features that attributed originality and newness to the design and dismissed the Applicant’s application.

As stated above, the learned Judge considered the designs himself without any reference to expert evidence and followed the dicta of Laddie J in Household Articles Ltd’s Registered Design [1998] that a design may be valid over prior art even though individual features are very similar.

While breaking little new ground, this case does reinforce the fact that the Malaysian courts are interpreting local law of Industrial Design in accordance with English precedents.

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