MALAYSIA: INFRINGING COPY MUST BE OBVIOUS IMITATION OF THE REGISTERED DESIGN UPON THE VISUAL COMPARISON

April 12th, 2012

 

In the case of Visiber Sdn. Bhd. v Tan Meng Them and others, the Malaysian High Court in Kuala Lumpur upheld the industrial design infringement claim of Visiber over its business that uses inverted triangle formula (“the methodology”) in its multi-level marketing network.

The Court held that the Plaintiff has proved on the balance of probability that the Defendants have infringed the Plaintiff's industrial design.

Visiber (hereinafter referred to as “the Plaintiff”) is a company incorporated in Malaysia that uses the methodology that explains birth codes with self-created symbolic analysis and the co­relations or dynamics of numbers. In the Plaintiff's business, all approved independent distributors are given a starter kit containing several documents and policies and procedures (hereinafter referred to “the contract”) stating that all copyright, trademarks and designs shall not be copied, distributed, displayed or reproduced in any manner without the Plaintiff's permission. Two of the Plaintiff’s current directors, Mr. Tan Boon Jin and Mr. Hew Choong Jeng (the founders) are also the directors of Plaintiff's predecessor.

The first Defendant is an individual known by the name of Oliver Tan and was a bankrupt since 22 August 2002. He previously was employed with consideration by the Plaintiff's predecessor being a company. The second Defendant is Amber Network Corporation Sdn. Bhd., a company incorporated in Malaysia. The third and fourth defendants are individuals, the subscribers and promoters of the second Defendant who are also members of the Plaintiff's independent distributors.

The Plaintiff asserts that it created the methodology through years of effort and research. In 2004, first Defendant was employed (trainer in few instances) with consideration by the Plaintiff predecessor to teach the methodology after being taught. For the purposes of teaching, the Plaintiff had expended a lot of skill and effort to produce the "Pyramick Methodology, A Breakthrough in New Age Metaphysics" book (hereinafter referred to as “the basic book”) and the "the Mastery Programme" book (hereinafter referred to as “the masters book”) (both books are referred collectively as "the Plaintiff's literary work"). The basic classes were usually taught by the 1st Defendant using the basic book whilst the masters classes were usually taught by Mr. Hew Choong Jeng using the masters book.

The defendants argued that they did not infringe the Plaintiff’s industrial designs for the simple reason that the Plaintiff started selling products bearing its registered industrial designs at the end of 2005, which is some 18 months before the date of registration of the industrial designs in Malaysia i.e. on 6 June 2007 and 18 June 2007. But the Court rejected this submission for the reason that the issue of invalidity was never pleaded and it is a cardinal principle of pleadings that the parties to an action are bound by their own pleading. Therefore, the Court found that the Plaintiff had established a case of industrial design infringement against the Defendants.

The Court held that infringement of an industrial design is established where the infringing copy is an obvious imitation of the registered design upon the visual comparison of the eyes. Thus, the Court after visual comparison between Defendants' number pendants and frames and the Plaintiff's industrial designs concluded that they are an obvious imitation of the Plaintiff's registered industrial designs. Differences, if any, were wholly immaterial and insignificant.

The Court also rejected the Defendants’ counterclaim and highlighted the fact that the Defendants could not have exercised any form of creativity, skill or labor just because they have authored the introductory section of the work. The Plaintiff’s evidence shows that the main section are of greater importance and it was created by Mr. Tan Boon Jin and Mr. Hew Choong Jeng or involved compilation of existing materials under their supervision, direction and approval. Moreover, by virtue of the Statutory Declaration as a prima facie evidence, the Court held that the ownership of the copyright in the said works lies with predecessor of the Plaintiff.

First Defendant stated that the copyright belongs to him as he has authored the books “The Pyramick Methodology" and "The Mastery Programme", in respect of which the Plaintiff claims copyright. In counter-claim he also claims against damages and the injunction for Plaintiff’s act/conduct of infringing his copyright. The Court find that for the Defendants to the effect that at the time when the Plaintiff commenced this action, i.e. on 20 June 2008, the Plaintiff did not own the copyright in the Plaintiff's literary works in question as their written submission arguing the   assignment  dated 20 October 2010 is at variance with evidence of one of the Plaintiff’s witnesses.

The Court also held that for passing off action, the misrepresentation by the Defendants of their goods, as that of the Plaintiff is an essential element of the tort. The evidence showed that the Plaintiff’s products were sold under different brand names ("Visiber” and "Amber Network” respectively) so, the Court found no misrepresentation on part of Defendants. The Plaintiff also did not manage to show any evidence of distinctiveness and goodwill attached to the features found in the Plaintiff’s products. Therefore, the Court concluded that Plaintiff's passing off claim must fail.

The Plaintiff has claim of damages against the Defendants on basis of conspiracy to injure the Plaintiff’s legitimate interest on the ground that Defendants acted in combination with one another and did unlawful acts of copyright and industrial design infringement, passing-off of the Plaintiff’s business. While the Court rejected the claim and held that as the Plaintiffs copyright infringement and passing off claim had failed already and the Plaintiff had also failed to prove on the balance of probability that there was knowing assistance by the respective Defendant to each other to injure the Plaintiff’s interest or a conspiracy to advance their illegitimate interests.

Thus, in this case the plaintiff proved by evidence that an infringing copy was an obvious imitation of the registered design upon the visual comparison of the eyes which is an essential requirement to claim industrial design infringement.

ADIPVEN can assist in advising on the registrations of industrial designs and how to attack validity of registered industrial designs in Malaysia, India, Singapore, Thailand, Vietnam, Indonesia, Philippines and Brunei. Please do not hesitate to write to us at info@adipven.com if you need any further clarifications on this matter.