1. ) CHONG TECK CHOY 2. ) MS-PRINT INDUSTRY SDN BHD v BINA-SAFEE SDN BHD

Case Significance

Illustrates that a registered industrial design lacking novelty under section 12 of the Industrial Designs Act 1996, and whose eye-appeal is unproved, cannot support an infringement claim and is liable to rectification of the register.

This High Court decision at Kuala Lumpur, in the Commercial Division, concerns a claim for infringement of a registered industrial design in warning tapes, coupled with a passing-off claim, and a counterclaim to rectify the register. The first plaintiff claimed that the defendant had infringed its registered industrial design, while the second plaintiff claimed that the defendant had passed off its business as a manufacturer of warning tapes. The defendant denied infringement and counterclaimed for rectification of the design under section 24 of the Industrial Designs Act 1996, contending that the first plaintiff was not the owner of the design, that the design was not capable of registration, and that it was not new as the Act requires.

The validity of the registered design was central, because a design that is not new is liable to be expunged and cannot support an infringement claim. The court examined evidence that warning tapes with similar features existed in Malaysia and elsewhere before the relevant priority date, including original samples obtained from foreign manufacturers. It found that the features relied on, such as the small squares of a particular dimension, were commonly used in the trade, and that the only feature said to distinguish the plaintiff's design, a gap between the squares, was immaterial to the design. On that footing the design was not new within the meaning of section 12 of the Act.

The court also held that the first plaintiff had failed to establish the "eye-appeal" element of its industrial design in the finished product, since no actual customers of the plaintiff were called to give evidence on how the design appealed to the eye. With the design shown not to be new and its eye-appeal unproved, the infringement and passing-off claims could not succeed. The court dismissed the plaintiffs' claims and allowed the defendant's counterclaim for rectification. The judgment is a useful illustration of how a registered industrial design may be found invalid for want of novelty and eye-appeal, defeating an infringement claim and supporting rectification of the register.