LOOKING GOOD
The Appeal of Designs in Getting Noticed by the
Customer
Chew Kherk Ying
Wong & Partners is a member of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with
the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent,
in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
Same function – yet different appearance?
Nokia – Industrial Designs evolution
COCA COLA – Industrial designs evolution
Industrial Design
– Industrial design is concerned with the aspect of that process that
brings that sort of artistic form and usability usually associated with
craft design to that of mass produced goods.
– An industrial design renders an object attractive or appealing, thus
increasing its marketability and adding to its commercial value.
Why protect industrial designs?
– Industrial designs makes an article attractive and appealing; hence
they add commercial value and increase marketability.
– When industrial design is protected, the owner is assured an exclusive
right against unauthorized copying for a limited duration.
– Capable of transmission and assignment.
– Ensures a fair return on investment.
– Encourage creativity and promote fair competition.
Profitable changes in product design
How can industrial designs be protected?
– through registration
– usually for 15 – 25 years
Criteria for registration
– An “industrial design”
– design must be new
– has authentic appeal
– must be applied to an article
“Design”
– Means feature or 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 solely by the eye,
but does not include a method or
principle of construction
Example of 3D and 2D design
A person infringes a registered design if he does the following
without consent of the owner :
a)
applies the same or similar design to an article
b)
imports into Malaysia for sale or trade any imitation of the design; or
c)
sells, or offers for sale, or hires any imitation of the design
Remedies available
 Civil Action
– Injunction
– Anton Piller Order
– Damages for infringement
– Accounts of Profits
Protection without registration?
 Dual protection under copyright law
 Advantage of having a registered industrial design cf. relying on copyright law?
– no requirement to prove copying by the infringer in order to win in court; this means that
"independent creation" is not a defense in as it is in copyright law.
– Claim successful as long as shoes that the registered design and the infringer’s design
are substantially the same in overall appearance.
– As a result of it having been examined, a registered design is presumed valid, and the
burden lies on the alleged infringer to prove otherwise.
– Careful procurement of the original design patent can result in a broad scope of
protection, one which can protect not only the particular embodiment of the design, but
perhaps the general design concept as well.
– when the case for infringement is strong, owner of registered designs have a good chance
of obtaining a preliminary injunction in court.
Illustrations
Wong & Partners is a member of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with
the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent,
in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
Honda Giken Kogya Kabushiki Kaisha v Allied Pacific Motor [2005] 3 MLJ 30
Honda Wave 125 Motorcycle
Comel Manja JMP 125 Motorcycle
Interlocutory application; Judge found that “there are many similarities
between the plaintiffs designs and the manufactured Comel Manja JMP 125,
let alone they are near replicas, it is thus sufficient […] to conclude that there
is a serious question to be tried” - injunction granted.
Dyson Limited v Vax Limited [2010] EWHC 1923
Dyson vacuum
cleaner- Registered
Design

Vax vacuum
cleaner- Mach Zen
The Court found that there was no infringement as the informed user would not consider the similarities particularly
significant, but would consider the differences significant particularly:-
– the rear view, hose connector position, bin handle, wand handle, cut-away feature and the bumper of
the Registered Design and the asymmetry of the Mach Zen

“the overall impression produced by the Registered design is smooth curving and elegant, [while the] Mach Zen is
rugged, angular and industrial, even somewhat brutal”
Dyson - Registered design
Vax - Mach Zen
Dyson - Registered design
Vax – Mach Zen
Dyson - Registered design
Vax – Mach Zen
Dyson - Registered design
Vax – Mach Zen
Considerations in choosing an appealing
design
 Aesthetic appeal
– design should be eye-catching and attractive
 Cost of manufacture
–
more intricate and complex design may be more costly to produce
 Differentiation from other products with the same function
 Branding
– Building brand identity
– Consistent with existing brand culture
 Restrictions: Must not be designs contrary to public order or morality
THANK YOU
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"Looking Good" - The Appeal of Designs in Getting Noticed