dalam mahkamah tinggi malaya di shah alam …dalam mahkamah tinggi malaya di shah alam dalam negeri...
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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
10
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:
13
“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:
17
“[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
18
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
19
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
20
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] ….
23
(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
24
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);
25
(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.
26
(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):
27
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.
28
(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.
29
(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.
30
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).
31
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;
32
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
33
[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.
34
[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
43
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