Joshua Teoh considers the adequacy of the examination procedure under the Industrial Designs Act 1996.
 
INTRODUCTION
 
In the unreported cases of Koay Kar Kheng v Rong Qiang Incense (M) Sdn Bhd (Suit No. 25IP-9-07/2012) and Koay Kar Kheng v Seong Leong (M) Sdn Bhd (Suit No. 25IP-10-07/2012), the High Court of Malaya revoked and expunged Industrial Design Registration No. 05- 00975-0101 for the design of incense stick (“Stick Design”) and Industrial Design Registration No. 06-00853-0101 for the design of incense coil (“Coil Design”) (collectively “Purported Designs”) from the Register of Industrial Designs (“Register”) by reason that the Purported Designs were not new on the respective priority dates of 15 November 2005 for the Stick Design and 7 November 2006 for the Coil Design.
 
 
 
THE APPLICATIONS BEFORE THE HIGH COURT
 
The applications to the High Court for the relief to revoke and expunge the Purported Designs from the Register were both initiated by a trade association, Persatuan Pedagang-Pedagang Barang-Barang Sembahyang Malaysia (“the Association”), whose members consist of incense traders and manufacturers in Malaysia. These applications were filed following the refusal of the registered proprietors to heed the repeated requests from the Association to voluntarily de-register the Purported Designs.
 
Furthermore, the applications were necessary following the issuance of a warning notice in a Chinese national newspaper by the proprietors of the Purported Designs claiming exclusive rights over the Purported Designs which left many incense traders and manufacturers feeling worried and anxious about their ability to freely continue in the trade.
 
THE FINDINGS OF THE HIGH COURT
 
In both applications before the High Court, the Association produced evidence of prior designs in Malaysia in the form of photographs, advertisements, publications and a documentary film featuring incense sticks and coils that are identical to the Purported Designs. Such evidence also showed that the prior designs had been in existence long before the priority dates of the Purported Designs. Relying on these prior designs, the Association submitted that the Purported Designs were not new at their respective priority dates and should be revoked and expunged from the Register under Section 24(1)(a) and/or Section 27(1)(a) of the Industrial Designs Act 1996 (“IDA”).
 
In support of its reliance on Section 24(1)(a) of the IDA, the Association submitted that it is a person aggrieved by the Purported Designs remaining in the Register without sufficient cause or wrongfully remaining in the Register. The Association, whose purpose is to protect the interests of incense traders and manufacturers, was a party that was clearly affected by the registration of the Purported Designs and as such, was entitled to seek an order from the Court to expunge the Purported Designs from the Register.
 
The Association also submitted that the Court had the jurisdiction to revoke and expunge the Purported Designs under Section 27(1)(a) of the IDA which allows any person to apply to the Court to revoke the registration of an 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 that industrial design.
 
Upon examining the evidence of the prior designs produced by the Association, the Court held that the novelty of both the Purported Designs were defeated when it was shown that they were substantially similar to the prior designs. The Court opined that the Purported Designs need not be identical to prior designs for them to lose their novelty and that their difference with the prior designs in immaterial details or features commonly used in the relevant trade will not render them new.
 
Accordingly, the Court held that the Purported Designs were liable to be revoked and expunged from the Register. It was also held that the Association could rely on either Section 24(1)(a) or Section 27(1)(a) or both, of the IDA, as the Association qualified as a person aggrieved by, or interested in, the Purported Designs. Furthermore, the Court observed that when comparing the Purported Designs with the prior designs, the Court should only be concerned with the appearance of these designs and not their dimensions.
 
OVERVIEW OF THE EXAMINATION PROCEDURE
 
The IDA does not permit an industrial design to be registered unless it is new. However, under the current examination procedure, an applicant for the registration of an industrial design would only need to satisfy the procedural requirements and regulations prescribed under the IDA in order to qualify for the registration sought by him.
 
When submitting an application for registration, an applicant must comply with, among others, Section 14(1) of the IDA which stipulates inter alia that an application for the registration is to be: (i) made in the prescribed form and filed at the Industrial Designs Registration Office; (ii) accompanied by the prescribed number of representations of the article to which the application relates; (iii) contain a statement of novelty in respect of the design to which the application relates; and (iv) accompanied by the prescribed filing fee.
 
The examination procedure is set out in Section 21 of the IDA and imposes a duty on the Registrar to confirm whether the application complies with the formal requirements prescribed under the IDA and the Industrial Designs Regulations 1999. If the requirements under Section 21 of the IDA are complied with, the Registrar is to register the industrial design applied for and issue a certificate of registration under Section 22 of the IDA. Such certificate of registration is prima facie evidence of the validity of the registration.
 
CONCLUSION
 
It appears that the pre-registration examination of an industrial design under the IDA caters only for formality examination. There is no provision in the IDA for any substantive examination to verify the novelty of the industrial design for which registration is sought as the Registrar would, among others, accept at face value the representations in the statement of novelty submitted by the applicant. Consequently, the nature of the examination procedure prescribed under the IDA would potentially allow industrial designs which are not novel to be registered, such as the case of the Purported Designs.
 
Notwithstanding the weakness in the examination procedure under the IDA, the public and trade are not left without recourse against the consequences of the registration of an industrial design that is not novel as they can seek recourse under Section 24 or Section 27 to revoke and expunge such a design from the Register.