DALAM MAHKAMAH TINGGI MALAYA DI SHAH ALAM DALAM NEGERI SELANGOR DARUL EHSAN SAMAN PEMULA NO: BA-24NCVC-174-10/2016 Dalam perkara Seksyen 27, Peraturan 27, 28 dan/ atau peruntukan-peruntukan yang relevan dalam Akta Reka Bentuk Perindustrian 1996 dan Peraturan-Peraturan Reka Bentuk Perindustrian 1999; Dalam Perkara Reka Bentuk Perindustrian berdaftar Nombor MY 12-01260-0101; Dan Dalam perkara Reka Bentuk Perindustrian berdaftar Nombor MY 13-01869-0101; Dan Dalam perkara Reka Bentuk
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DALAM MAHKAMAH TINGGI MALAYA DI SHAH ALAM …dalam mahkamah tinggi malaya di shah alam dalam negeri selangor darul ehsan saman pemula no: ba-24ncvc-174-10/2016
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DALAM MAHKAMAH TINGGI MALAYA DI SHAH ALAM DALAM NEGERI SELANGOR DARUL EHSAN
SAMAN PEMULA NO: BA-24NCVC-174-10/2016
Dalam perkara Seksyen 27,
Peraturan 27, 28 dan/ atau
peruntukan-peruntukan yang
relevan dalam Akta Reka
Bentuk Perindustrian 1996
dan Peraturan-Peraturan
Reka Bentuk Perindustrian
1999;
Dalam Perkara Reka Bentuk
Perindustrian berdaftar
Nombor MY 12-01260-0101;
Dan
Dalam perkara Reka Bentuk
Perindustrian berdaftar
Nombor MY 13-01869-0101;
Dan
Dalam perkara Reka Bentuk
2
Perindustrian berdaftar
Nombor MY 13-01870-0101;
BETWEEN
SUAN LEONG HANG (M) SDN BHD (No. Syarikat: 445940-H) …PLAINTIFF
AND
1. GOH LEONG WOI (NO. K/P : 620716-07-5591)
2. TEOH GAIK LAN (NO. K/P : 621018-07-5548) …DEFENDANTS
GROUNDS OF JUDGMENT (Enclosure 1)
A. INTRODUCTION
[1] The Plaintiff in its Originating Summons (Enclosure 1) sought
inter alia for the following order :
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i. An order for the registered Industrial Design Nos. MY 12-
01260-0101, MY 13-01869-0101 and MY 13-01870-0101 in the
name of the First Defendant and/or Second Defendant and/or
Defendants be revoked immediately and expunged from the
Registry’s Record Industrial Designs, Malaysia which is stored
in a relevant government registrations or government
corporations in Malaysia;
ii. A copy of the sealed order shall be served on the Registrar of
the Industrial Design pursuant to section 24 (1) (d) of the
Industrial Design Act 1996 and the registration record of
Industrial Design shall be altered, amended, revoked and/or
updated and/or fixed by revoking or expunging the registered
Industrial Design Nos. MY 12-01260-0101, MY 13-01869-0101
and MY 13-01870-0101 in the name of the First Defendant
and/or Second Defendant and/or Defendants from the
Registry’s Record Industrial Design in Malaysia and
subsequently the cancellation is published in the gazettes
and/or relevant government gazette.
[2] This Court had earlier dismissed the Defendants’ application in
Enclosure 6 to convert Enclosure 1 to a writ action pursuant to
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Order 28 Rule 8 of the Rules of Court 2012. In dismissing the
Defendants’ Enclosure 6, the Court has also ordered the
Defendants to pay the Plaintiff RM4000 in costs.
B. BACKGROUND FACTS
[3] The background facts which have led to the filing of Enclosure
1 by the Plaintiff are as follows:
3.1 The Plaintiff is a company running its business under the
name of Suan Leong Hang (M) Sdn Bhd). The Plaintiff is
involved in the business of designing, manufacturing, and
distributing Chinese prayer products since 2000.
3.2 The Defendants (i. Goh Leong Woi ii. Teoh Gaik Lan) in
the present case are husband and wife. This husband
and wife team is also involved in the business of praying
materials and paper products.
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3.3 The subject matter of this present case relates to six
industrial designs (IDs) in respect of prayer products
which had been registered with the Registrar of Industrial
Designs, Malaysia wherein three IDs were registered by
the Plaintiff and the other three were by the Defendants.
3.4 The three IDs registered by the Plaintiff are as follows:
a) Incense Stick (Registration No.MY 12-01337-0101) - Date
of registration is on 25.9.2012.
b) Pineapple Lamp (Registration No.MY 07-00576-0101) -
Date of registration is on 24.4.2007.
c) Gold Bar Lamp (Registration No.MY 07-01549-0102) - Date
of registration is on 18.10.2007.
3.5 Since the registration of the Plaintiff’s IDs namely; in 2007
and 2012 respectively, the Plaintiff has manufactured,
assembled, provided and distributed product based on its
IDs extensively in Malaysia and outside Malaysia.
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3.6 However in 2016, the Plaintiff claimed that it discovered
that the Defendants had also registered their IDs in
respect of the similar poducts which are as follows:
a) Joss Stick (Registration No.MY 12-01260-0101) -
Date of registration is on 12.9.2012.
b) Pineapple Lamp (Registration No.MY 13-01869-0101) -
Date of registration is on 24.12.2013.
c) Gold Bar Lamp (Registration No.MY 13-01870-0101) - Date
of registration is on 24.12.2013.
3.7 The Plaintif had alleged that the Defendants’ IDs are
indentical to and/or a fraudulent or obvious imitation of its
IDs that were registered very much earlier.
3.8 On the premise of protecting its exclusive rights over its
registered industrial designs, the Plaintiff had commenced
this action (Enclosure 1) against the Defendants seeking
for an order that the Defendants’ IDs be revoked and/or
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expunged pursuant to section 27 of the Industrial Designs
Act 1966 (ID Act).
3.9 The Plaintiff’s application was strenously opposed by the
Defendants and the Defendants are counter claiming for
the following reliefs:
a) An order that the Industrial Design MY 12-01337-0101,
MY 07-00576-0101, and MY 07-01549-0102 all registered
under the name of the Plaintiff be expunged or revoked
immediately form the register and/or records of the (ID)
Registration Office and its branch office;
b) An order to rectify and/or vary the statement of novelty
of the Defendants’ Industrial Design MY 07-00576-0101,
MY 07-01549-0102 to “The novelty of the design resides
in the pattern and ornamentation applied to the article
as shown in the representations”;
c) Alternative to (a) and (b), an order that the Industrial
Design MY 12-01337-0101, MY 07-00576, and MY 07-
8
01549-0102 all registered under the name of the Plaintiff
and the Industrial Design MY 07-00576-0101, MY 07-
01549-0102 all registered under the Defendants’ name
be expunged or revoked immediately from the register
and/or records of the Industrial Design Registration
Office and it branch office;
d) An injunction to restrain the Plaintiff from infringing the
Defendants’ Industrial Design MY 12-01337-0101 and/or
any Industrial Design which is substantially similar to
the Defendants’ Industrial Design MY 12-01337-0101 in
the course of trade;
e) An order for delivery up within 7 days form the date of
Judgment, all infringing reproductions of the
Defendants’ Industrial Design MY 12-01337-0101, all
documents and records connected to the manufacture,
storage, supply, distribution, sale, offer for sale or
disposal of the infringing reproductions of the
Defendants’ Industrial Design MY-12-01337-0101; and
f) Damages to be assessed for the infringement againts
the Defendants’ Industrial Design MY 12-01337-0101.
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C. RELEVANT PROVISIONS PERTAINING TO THE
REGISTRATION OF INDUSTRIAL DESIGNS AND THE
LEGAL PRINCIPLES GOVERNING ITS REGISTRATION /
REVOCATION OF SUCH REGISTRATION.
[4] In the present case, it is not in dispute that both the Plaintiff and
the Defendants had their IDs registered with the Registrar of
Industrial Designs Malaysia under the ID Act.
[5] The Plaintiff’s Incense Stick was registered thirteen days after
the Defendants’ Joss Stick was registered. While the Plaintiff’s
Pineapple Lamp and the Gold Bar Lamp were registered six
years earlier before the Defendants’ Pineapple Lamp and the
Gold Bar Lamp were registered.
[6] Before this Court proceeds to determine the merits of both the
Plaintiff’s and the Defendants’ case, it is only apt for this Court
to set out the relevant provisions under the ID Act pertaining to
the registration of industrial designs in Malaysia as well as the
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the legal principles governing its registration and revocation of
such registration.
[7] Now, what is exactly “industrial design”? Section 3(1) of the
ID Act set out the definition of “industrial design” as follows:
“Industrial designs” 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
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[8] The ID Act provides an avenue for the registration of industrial
designs in the Register of Industrial Designs kept under the Act.
It is provided under its section 12 that:
“12. Registrable industrial design
(1) Subject to this Act, an industrial design shall not be
registered unless it is new.
(2) An industrial design for which an application for
registration is made shall not be considered to be new
if, before the priority date of that application, it or an
industrial design differing from it only in immaterial
details or in features commonly used in the relevant
trade:
(a) was disclosed to the public anywhere
in Malaysia; or
(b) was the subject matter of another
application for registration of an
industrial design filed in Malaysia but
having an earlier priority date made
by a different applicant in so far as
that subject matter was included in a
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registration granted on the basis of
that order application.”
[9] What constitutes new and/or novel industrial design under
section 12 of the ID Act has been discussed and decided in
several case authorities. Suffice for this Court to cite a few.
i. In the case of F&N Dairies (Malaysia) Sdn Bhd v
Tropicana Products, Inc And Other Appeals (2013)
MLJU, the Court of Appeal at paragraphs [21], [22], [23],
[24] and [25] of its judgment had stated as follows:
“[21] An industrial design can only be registered and enjoy
the protection under the IDA 1996 if it satisfies the two -
fold requirements under section 12 of the IDA 1996 i.e. it
must be new or novel (section 12(1)) and it is
an “industrial design” as defined under section 3(1) of
the IDA 1996. A design which fails to fulfill these
requirements is clearly not registrable under the IDA
1996 and cannot qualify for any protection under the
[44] Looking at the four articles and comparing the the designs of
both the pineapple and the gold lamps, this Court must
emphasise here without any hesitation, that the appearance of
the Defendants’ pineapple and gold lamp are mostly similar and
identical to the Plaintiff’s articles.
[45] This Court is in agreement with the counsel for the Plaintiff that
the novelty claimed by he Defendants in their articles
(pineapple and gold lamps) namely; the 2D gold bar artwork
and Chinese characters obviously is unsustainable.
[46] It is this Court’s finding that the 2D gold bar artwork and
Chinese characters in the Defendants’ IDs are clearly
immaterial details and/or not substantial enough so as to confer
registrability upon the design. The same immaterial details are
also commonly used in the trade as the 2D gold bar artwork
and Chinese characters are generic and/or common signals of
properity within the Chinese community.
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[47] Hence, undoubtedly the Defendants’ Pineapple and Gold Bar
Lamps designs were not new/ novel designs within the meaning
of section 12 of the (ID) Act 1996.
[48] Upon the power conferred under section 27(1)(a) of (ID) Act
1996, this Court hereby revokes the registrations of the
Defendants’ Pineapple and Gold Bar Lamps (IDs) and thus, the
same infringing IDs are to be removed from the register.
[49] In view of the aforemention deliberations, this Court hereby
allows the Plaintiff’s application in Enclosure 1 and dismisses
the Defendants’ counterclaim in paragraph 34 in their Affidavit
in Reply (Enclosure 3) with costs.
[50] This Court further orders that the Defendants pay the Plaintiff
RM10,000.00 in costs.
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t.t.
………………………………………….. (DATUK AZIMAH BINTI OMAR)
Judge
High Court Shah Alam
Selangor Darul Ehsan
Dated 14th November, 2017
Peguam Plaintif - Tetuan Chung Chambers Encik Bahari Yeow Cik Patricia Encik Ong Wei Shen Peguam Defendan - Tetuan Gan Partnership Encik Gan Khong Aik Cik Kang Mei Yee