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-

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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

Act.

[22] Section 12 of the IDA 1996 provides:

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“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

registration granted on the basis of

that order application. ”

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[23] Reading both the provisions of section 12(1) together

with section 12(2)(a) of the Act, the clear conclusion one

can arrive at is this: if there is a disclosure or

publication in Malaysia of an industrial design which is

similar or substantially similar or differs only in

immaterial details or in features commonly used in the

relevant trade prior to the priority date of the

Respondent’s 624 Design, then the Respondent’s 624

Design would be rendered invalid for registration under

the Act.

Definition of “industrial design” Section 3(1) of the IDA

1996

[24] First and foremost, a registrable industrial design under

the IDA 1996, particularly section 12, specifically refers

to an “industrial design” as defined under section

3(1) of the IDA.

[25] Section 3(1) of the IDA defines an “industrial

design” as “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-

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(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. ”

ii. Hamid Sultan Abu Backer JC (as he then was) in the

case of Buncho (M) Sdn Bhd v Q-Stationers Sdn Bhd

(2010) 7 CLJ 359, has held inter alia:

“[6] ….

(i) An industrial design cannot be registered unless it is

new and it shall not be considered as new if, before the

priority date of its application, it or an industrial design

differing from it only in immaterial details or in features

commonly used in the relevant trade:

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(i) Has already been disclosed to the public

anywhere in Malaysia; and

Public disclosure would cover all actions of sales, use,

publication, publicity, exhibiting or such similar

activities (see s. 12(1) and (2)(a) of IDA 1996);

(j) A registered industrial design is valid for an initial term

of five years computed as of its filing date and may be

extended up to a maximum of fifteen years at five yearly

intervals (see s. 25 of IDA 1996);

……

(q) An industrial design is not new if before its priority date,

it or an industrial design differing from it only in

immaterial respects was disclosed to the Malaysian

public (see s. 12(2) of IDA 1996).

iii. In the case of Three V Marketing Sdn Bhd v Heng

Capital Industries (M) Sdn Bhd; The Registrar Of

(ID)(Interested Party) the court held that:

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“[21] Now, there are two ways in which the requirements of s.

12(2)(a) of the Act for "disclosure to the public anywhere

in Malaysia" are fulfilled and they are namely: (i) by prior

use of the design, by selling or displaying to the public

an article to which the design has been applied; and (ii)

by prior publication in documents.

[22] I find it useful to reproduce the principles as

summarized in Russell-Clarke and Howe on Industrial

Design (7th edn):

“Prior publication of a design by prior use can be said to

take place when the design has been applied to articles,

and those articles have been used in such a way that the

design becomes disclosed to the public before the date

of application for registration of the design in suit. It

should be noted that it is sufficient if the design is used

on any kind of article, and it need not be the same

article, or even in the same category, as the article in

respect of which the design is registered or sought to be

registered.

In general there will be publication if articles to which

the design is applied are manufactured, displayed or

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used in such a way that members of the public will or

might see them. It is not necessary that the articles

should been sold. Prior use thus means not use by the

public, but use in public as opposed to use in private”.

[10] Section 17 (1) of the ID Act defines priority date as follows:

“(1) Subject to this section, the priority date of an

application for the registration of an industrial design is the

filing date of the application.”

[11] Be that as it may, section 27 of the ID Act confers the Court the

power to revoke registration of industrial design. The power

conferred under section 27 of the ID Act reads as follows:

“Revocation of registration and grant of compulsory licence

27. (1) At any time after the registration of an industrial design,

any person may apply to the Court-

(a) for the revocation of the registration of the

industrial design on the ground, subject to

section 12, that the industrial design has been

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disclosed to the public prior to the priority date of

the application for registration of the industrial

design;

(b) for the cancellation of the registration of the

industrial design on the ground that the

registration of the industrial design has been

procured by unlawful means; or

(c) for the grant of a compulsory licence in respect of

the industrial design on the ground that the

industrial design is not applied in Malaysia by any

industrial process or means to the article in

respect of which it is registered to such an extent

as is reasonable in the circumstances of the case,

and the Court may make such order on the

application as it considers just.

(2) The provisions of paragraphs (1)(a) and (1)(b) shall be

without prejudice to the right of the owner of an

industrial design to request the Registrar for the

revocation of a registered industrial design of which he

is owner, or to the power of the Registrar to order the

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revocation of the registration of an industrial design on

any other ground as he thinks fit.’’

[12] In relation to revocation of registration of industrial design,

Regulation 27 and 28 of (ID) Regulation 1999 are also relevant.

[13] Regulation 27 of (ID) Regulation 1999 provides as follows:

“(1) An application to the Registrar for rectification of the Register

pursuant to subsection 24(3) or a request for revocation of

registration of the industrial design under subsection 27(2)

shall be made on ID Form 6 accompanied by the prescribed

fee and a statement setting out fully the applicant's interest

and the facts upon which he relies.

(2) Where the applicant is other than the owner of the industrial

design, a copy of the application and the statement referred to

in subregulation (1) shall be given to the owner.

(3) If the owner desires to oppose the application for rectification

of the Register or revocation of registration of the industrial

design he shall within three months from the date of receipt of

the application file a notice of opposition which shall include a

statement of the grounds upon which the owner objects to the

application and shall give a copy to the applicant.

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(4) An owner who does not file a notice of opposition shall be

deemed to have no objection.

(5) Within two months from the date of receipt of the notice of

opposition filed in accordance with subregulation (3), the

applicant may file a counter-statement setting out the grounds

on which he relies as supporting his application and the facts,

if any, alleged in the notice of opposition which he admits, and

shall at the same time give a copy to the owner.

(6) If no counter-statement is filed in accordance with

subregulation (5), the application shall be deemed abandoned.

(7) If a counter-statement is filed in accordance with

subregulation (5), the Registrar shall, after giving the owner

and the applicant an opportunity to be heard by filing in

written submissions within a specified time, decide on the

matter.

[14] While Regulation 28 reads as follows:

(1) An application to the Court under paragraph 24(1)(a),

subsection 24(3) or paragraph 27(1)(a), (b) or (c) may be made

by originating summons.

(2) ……..

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(3) ……..

(4) ……..

(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

registration granted on the basis of

that order application. ”

[15] With regards to Court’s power to revoke or expunge registration

of industrial design under section 27 of the ID Act, Hamid

Sultan Abu Backer JC in the case of Buncho had inter alia

stated the following:

[6] ….

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(k) At any time after the registration of an industrial

design, any person may apply to the court:

(i) For the revocation of the registration of the

industrial design, on the ground that the

industrial design has been disclosed to the

public prior to the priority date of the

application for registration of the industrial

design (see s. 27(1)(a) of IDA 1996); or

(ii) For the cancellation of the registered

industrial design on the ground that the

registration of the industrial design has

been procured by unlawful means (see s.

27(1)(b) of IDA 1996);

(l) The Registrar of Industrial Design must be notified of

any revocation proceeding by filing with him Form ID7

(see s. 27(2) of IDA 1996);

(m) The owner of a registered design shall have the

exclusive right to make or import for sale or hire, or for

use for the purposes of any trade or business, or to sell,

hire or to offer or expose for sale or hire, any article to

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which the registered industrial design has been applied

(see s. 32(1) of IDA 1996);

(n) A person infringes the rights conferred by the

registration of an industrial design if he, without the

license or consent of the owner of the industrial design,

does any of the following things while the registration is

still in force (see s.32(2) of IDA 1996):

(i) Applies the industrial design or any fraudulent or

obvious imitation of it to any article in respect of

which the industrial design is registered (see s.

32(2)(a) of IDA 1996); and

(ii) Sells, or offers or keeps for sale, or hire, or offers

or keeps for hire, any of the [infringing] articles

(see s. 32(2)(c) of IDA 1996);

(o) The owner of a registered industrial design shall have

the right to institute legal proceedings against any

person who has infringed or is infringing any of the

rights conferred by the registration of the industrial

design. A similar right is available against any person

who has performed acts that make it likely that an

infringement will occur (see s. 33(1) and (2) of IDA 1996);

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(p) The (ID) Act 1996 says that the industrial design must be

new. A design only needs to be new in Malaysia as its

priority date to qualify for registration (see s. 12 of IDA

1996);

(q) An industrial design is not new if before its priority date,

it or an industrial design differing from it only in

immaterial respects was disclosed to the Malaysian

public (see s. 12(2) of IDA 1996).

(r) In the High Court case of Golden Cresent Trading Sdn

Bhd v. Alpine Auto Access Sdn Bhd; Pendaftar

Rekabentuk Perindustrian (Interested Party) [2008] 9

CLJ 317, Ramly J (as he then was) stated this at p. 325,

para. 25:

Under section 12 of the IDA, an industrial design shall

not be registered unless it is new. An industrial design

shall not be considered to be new if before the priority

date of [its] application for registration, it or an

industrial design differing from it only in immaterial

details or in features commonly used in the relevant

trade was disclosed to the public anywhere in Malaysia.

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(s) The learned judge in the same case further elaborated

on what amounts to publication. At p. 325, para. 26, he

made reference to the unreported case of Teh Teik Boay

v. Chuah Siak Loo [1961] 1 LNS 136 where Hepworth J

said the following:

Broadly speaking, there is publication if the design has

been disclosed to the public as opposed to being kept

secret. The question which has to be decided is,

therefore, has the public been put in possession of the

design? Has it knowledge of the design? It is not

necessary that the design should have been actually

used. There will just as much be a publication if it is

shown that it was known to the public, without ever

having been actually out to use. Thus, publication may

be of two types, (a) publication in prior documents; (b)

publication by prior user.

(t) The definition of 'prior use' by Russell-Clarke was

adopted by Besalon International Limited & Ors v. South

Strong Industries Sdn Bhd [1997] 1 CLJ Supp 335 where

the learned judge said the following:

Prior use according to Russell-Clarke (page 50):

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Occurs where the design has been actually

applied to articles before the date of registration

of the design, and those articles have been used

in such a way that the design becomes disclosed

to the public.”

[16] Hence, an industrial design which has been registered under

the ID Act can only seek protection under the Act if the

requirements set out under section 12 of the Act are satisfied.

This position has been clearly envisaged in the decided cases

which this Court had mentioned earlier.

D. ISSUES FOR DETERMINATION

THE PLAINTIFF’S IDs VERSUS THE DEFENDANTS’ IDs

[17] The Plaintiff in its attempt to have the registration of the

Defendants’ IDs expunged /revoked had alleged the followings:

(i) the Defendants’ IDs are identical to and/or a fraudulent or

obvious imitation of the Plaintiff’s Industrial Designs.

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(ii) any differences between the Plaintiff’s IDs and the Defendants’

IDs are merely immaterial details or features commonly used

in the relevant trade.

(iii) the Chinese Character that has been referred by the

Defendants in the Pineapple and Gold Bar Lamp are

completely irrelevant and that those characters are clearly not

a valid subject matter to be protected as registered Industrial

Designs.

(iv) the Defendants’ IDs were not new at the material times

because of the registrations and the sale of products of the

Plaintiff’s IDs were done much earlier than Defendants since

2007 and 2012 respectively whereas the Defendants’ IDs

registered on 2012 and 2013.

(v) the novelty of Plaintiff’s Incense Stick resides in the three

dimensional Chinese Coin shape embossed out of the surface

linking each other to make up the spiral design around the

upper portion of Plaintiff’s Incense Stick and the resultant

shape and configuration of Plaintiff’s Incense Stick as a whole.

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(vi) the Defendants had no right to apply for the registration of the

Defendants’ IDs because they were not the original owners of

the aforesaid industrial designs.

[18] On other hand, the Defendants in defending their IDs and in

attempting to invalidate the Plaintiff’s IDs had contended the

following:

a) the Plaintiff started to sell products based on the Plaintiff’s

Designs and/or similar designs before the Plaintiff registered

the Plaintiff’s Designs.

b) the Defendants have produced and sold products based on

the Defendants’ Designs without infringing the Plaintiff’s

Designs.

c) in respect of the Plaintiff’s Incense Stick and Defendants’ Joss

Stick, the Certificates of Registration shows that the

Defendants’ Joss Stick has been registered on 12.9.2012 prior

to the Plaintiff’s Incense Stick wherein the Plaintiff’s Incense

Stick was only registered on 25.9.2012.

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d) the novelty claimed in the Defendants’ registration of Joss

Stick is different from the novelty claimed in the Plaintiff’s

registration of Incense Stick.

e) the Plaintiff’s Incense Stick cannot be new as the shape and

configuration has been widely used in the public.

f) the Plaintiff’s Pineapple and Gold Bar Lamps are not new as

lamps in the same shape and/or similar design have been sold

by others manufacturers in the same the industry to the public

prior to the date of application of the Plaintiff’s Pineapple and

Gold Bar Lamp.

g) the Plaintiff’s Pineapple Lamp and Gold Bar Lamp no

additional features, pattern and/or ornamentation be added.

h) on the other hand, the Defendants’ Pineapple and Gold Bar

Lamp have been added with 2D gold bar engraved with

Chinese character “zao cai jing bao” (the meaning being

bringing in wealth and treasure) and the red candle also be

engraved with Chinese characters “cai yuan guang jing” (the

meaning being may wealth come generously to you).

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i) the additional features in the Defendants’ Pineapple and Gold

Bar Lamps have made the Defendants’ Designs appear to be

distinct in the eyes of the Chinese community as Chinese have

strong affection for these suspicious words.

j) by an affidavit affirmed by one Leong Wing Fui, he has stated

that his company Soon Fatt Hung Enterprise Sdn Bhd (“SFH”)

has been selling lamps identical to the Plaintiff’s Pineapple

and Gold Bar Lamps prior to the Plaintiff’s Pineapple and Gold

Bar Lamp’s priority date.

[19] In the present case, in view of the allegations and the counter

allegations by the Plaintiffs and the Defendants against each

other’s IDs, the primary grounds on which both the Plaintiff and

Defendants sought to revoke each other party IDs are these:

i. the designs were not new as at the priority date;

ii. the designs were not new because there has already

been prior disclosure of such designs to the public;

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iii. the Defendants’ IDs is a fraudulent or obvious

imitation of the Plaintiff’s IDs

iv. any difference in the designs are merely immaterial

details or features commonly used in the relevant

trade

E. THE COURT”S DECISION

Novelty/New

The Plaintiff’s Insence Stick v the Defendants’ Joss Stick

[20] For ease of reference, this Court has set out below the two IDs

of the Plaintiff and the Defendants with regard to the joss stick /

incense sticks.

Plaintiff’s Industrial Design

Defendants’ Industrial Design

IDs Representation IDs Representation Incense st ick Reg. Date: 25 September 2007

Incense st ick Reg. Date: 12 September 2012

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[21] It was the contention of the Defendants that their joss stick’s

IDs was registered on 12.9.2012 which was thirteen days

earlier from the registration of the Plaintiff’s incense stick.

Hence, the priority date of the the Defendants’ joss stick is

12.9.2012.

[22] It was also contended by the Defendants that the Plaintiff’s

incense stick is neither a new design nor is new in shape as

such design and shape have been commonly used in trade as

the design for joss sticks and incense sticks. The Defendants

further contended that such design can be seen for hundreds if

not thousand years in praying materials in Chinese temple or

ceremony.

[23] The counsel for the Defendants had urged this Court to take

judicial notice that joss sticks have existed long time ago in the

market prior to the Plaintiff’s registration of its incense stick on

25.9.2012.

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[24] The Plaintiff on the contrary had contended that even though

the Defendants’ joss stick was registered prior to its incense

stick, the Plaintiff has been selling the incense stick prior to the

prority date of the Defendants’ joss stick. To prove its

contention, the Plaintiff has adduced evidence in Exhibit “P-6”

(Enclosure 7) namely; invoices issued by the Plaintiff dated

11.9.2012.

[25] Now, although the invoices were issued one day before the

Defendant’s priority date, this Court is in agreement with the

counsel for the Plaintiff that P6 is sufficient evidence to prove

that the Plaintiff has been selling and distributing its own

incense stick while applying its registered IDs in Malaysia prior

to the Defendants’ registration date of their joss stick.

[26] On the contention by the Defendants that there is no novelty in

the Plaintiff’s incense stick as joss sticks have been used as

praying product from time in memorial, this Court must

emphasize here that the incense sticks produced by the Plaintiff

is not the normal and ordinary joss stick which have been used

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from time in memorial. It is this Court’s judgment that the

incense sticks produced and manufactured by the Plaintiff is

entirely different from the normal joss sticks used for praying.

[27] The novelty in the Plaintiff’s incense stick lies in its shape and

configuration of the design of the joss stick. This can be seen in

Exhibit “P-2” (Enclosure 2) where in the Statement of Novelty

appearing in the MYIPO’s gazette Batch 14/2013 October 21,

2013. The statement of novelty in respect of the incense stick is

this: The Novelty of the design in the features of shape and

configuration of the article as shown in the

representations. It can be clearly seen that the article

covers not only the long stick shape but also the Chinese

Traditional Coin form figure “1.4 REFERENCE VIEW” as the

“shape and configuration of the article”.

[28] The Defendants on the other hand, had claimed novelty in their

Joss Stick in the feature namely; in the pattern of Chinese coins

spiraling around the stick.

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[29] This Court agrees with the counsel for the Plaintiff that images

of Chinese coins (which is a sign of prosperity within the

Chinese community) are images which are commonly used in

the trade as well as on Chinese prayer products.

[30] Hence, this Court is of the view that the Plaintiff’s Incense Stick

has satisfied the requirements envisaged under section 12 of

the ID Act and protection under the ID Act must be accordingly

accorded to the Plaintiff in respect of its IDs.

[31] In view of the finding above, an order revoking or expunging

the Defendants’ IDs in respect of the joss stick is inevitable for

lack of novelty.

The Plaintiff’s Pineapple and Gold Bar Lamps v the Defendants’

Pineapple and Gold Bar Lamps

[32] This Court must emphasise here that it cannot be disputed that

the Plaintiff’s Pineapple and Gold Bar Lamps were filed and

were registered in 2007, which is at least six years earlier than

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the Defendants‘s registration of their Pineapple and Gold Bar

Lamps i.e in 2013. Here, it is crystal clear that prior to the

Defendants’ registration of their Pineapple and Gold Bar Lamp

there has already been disclosure of similar IDs to the public.

[33] It is pertinent to be highlighted that in the Defendants’ attempt

to discredit the Plaintiff’s novelty in its Pineapple and Gold Bar

Lamp, the Defendants had contended that there are prior

disclosures of the IDs prior to the application date of the

Plaintiff’s Registered IDs.

[34] To this contention, the Defendants had furnished an affidavit

affirmed by a person by the name of Leong Wing Fui

(Enclosure 4). Leong Wing Fun (Leong) had claimed that he

runs a business under the name of Soon Fatt Hung Enterprise

Sdn Bhd (Soong Fatt Hung). Leong in his affidavit had averred

that Soon Fatt Hung’s business is producing and selling

Chinese praying material including prayer lamps. According to

Leong, Soon Fatt Hung had started producing Pineaple and

Gold Bar Lamp since year 2006. Leong had alleged that the

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Plaintiff had used its Gold Bar prayer lamp in the Plaintiff’s

catalogue printed in year 2007.

[35] In support of this allegation, Leong has enclosed in his affidavit

the following exhibits:

i. purported photos of his Gold Bar Prayer Lamp and

Pineapple Prayer Lamp (Exhibit “LWF-1”);

ii invoices that he had issued to his customers for sale in

July and August 2007 Lamp (Exhibit “LWF-1”);

iii. the receipt issued by Tai Chin Plastic Moulding Factoring

who purportedly made the mould for his Pineapple Prayer

Lamp and Gold Bar Prayer Lamp at his request in the

year 2006 (Exhibit “LWF-1”);

iv. the design of his packaging from the printing company in

July 2007 (Exhibit “LWF-1”);

v. the Plaintiff’s catalogue printed in year 2007 using his

Gold Bar prayer lamp (Exhibit “LWF-2”)

[36] With greatest respect, this Court agrees with the counsel for

the Plaintiff that Leong’s affidavit did not carry any weight and

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was no aid to the Defendants’ case. This Court finds so on the

following reasons:

i. firstly; the photographs are undated.

ii. secondly; the invoices and receipts issued are not

accompanied by pictures and/ or other documents

which show that the items in relation to them are

substantially similar to Plaintff’s Pineapple Lamp, in

particular invoices issued by Soon Fatt Hung were

all dated after Plaintiff’s Pineapple Lamp’s

registration date.

iii. thirdly; all the documents exhibited in Exhibit “LWF-

1” by Leong in his affidavit do not in any manner

show any of the design were Leong’s lamps nor

does it show that there was prior disclosure of his

(Leong) lamps to the public.

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iv. fourthly; Exhibit “LWF-2” does not in any manner

show that the catalogue was actually printed in

2007.

v. finally; this Court must also be mindful of the

undisputed fact that Soon Fatt Hung Enterprise Sdn

Bhd has a track record of infringing the Plaintiff’s

intellectual property rights. The Plaintiff had in fact

on 3.6.2013 obtained a judgment in the High Court

of Ipoh against Soon Fatt namely; an injunction

order restraining Soon Fatt Hung from infringing one

of the Plaintiff’s other registered IDs.

[37] For both the pineapple and the gold lamps, since the Plaintiff’s

registrations of its designs were undisputably very much earlier

than the the Defendants, then the question to be determine by

this Court is whether the appearances of the Defendants’

pineapple and gold lamps are substantially the same as the

Plaintiff’s pineapple and gold lamps.

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[38] This Court takes note that the crux of the Plaintiff’s allegation

against the Defendants apart from the Defendants’ IDs are not

new or novel is that; the Defendants’ Pineaple and Gold Lamps

are clearly identical and/or a fraudulent or obvious imitation of

the Plaintiff’s Pineapple and Gold Bar Lamps and if there are

any differences between the two, the difference in designs are

merely immaterial details and/or features common to the trade.

[39] The Defendants in refuting the Plaintiff’s contention had

contended that the novelty claimed in the Plaintiff’s Pineapple

and Gold Bar Lamps are in shape and in configuration whereas

the novelty claimed in the Defendants’ Pineapple and the Gold

Bar Lamps are the shape and configuration and the pattern and

ornamentation applied to the article.

[40] It was contended by the Defendants that their Pineapple and

Gold Bar Lamps have additional features namely; the 2D gold

bar artwork and Chinese characters which make the

Defendants’ Designs appear to be distinct in the eyes of the

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Chinese community as the Chinese community have strong

affection for these auspicious words.

[41] Thereto, the question that must be determined by this Court

has been clearly stated in Russell-Clarke and Howe on

Industrial Designs (7th Edn) para. 3-152 as follows:

The question which has to be decided is whether the

two appearances are substantially the same or not.

That the eye, and the eye alone, is to be the judge of

identify, and is to decide whether one design is or is

not an antipacipation of another, has been

consistently laid down.

[42] This Court also refers to the case of Amp Incorporated v

Utilux Pty Limited [1970] RPC 397 where the English Court of

Appeal at page 430 has held:

“There is a long line of authorities from Le May v. Welch [1883]

28 Ch.D. 24 at 34 onwards, including such a case as Allen

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West v. British Westinghouse Electric & Manufacturing [1916]

33 RPC 157 at 165, which have laid down that to qualify as

new or original a design must, when compared with the

design must, when compared with the design of prior

articles and other registered designs and published matter,

show a substantial difference. Novelty or originality must

be substantial, that is, must be present as a matter of

substance, having regard to the nature of the article.”

(emphasis given)

[43] For clearer comparison of the four articles and its designs, this

Court reproduces the pineapple and the gold lamps registered

by both the Plaintiff and the Defendants in the table below:

Plaintiff’s Industrial Designs

Defendants’ Industrial Designs

IDs Representation IDs Representation Gold Lamp Reg. Date: 18 October 2007

Gold Lamp Reg. Date: 24 December 2013

Pineapple Lamp Reg. Date: 24 April 2007

Pineapple Lamp Reg. Date: 24 December 2007

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[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.

46

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