MALAYSIA – PLAINTIFF SUCCEEDS IN DESIGN INFRINGEMENT AND PASSING-OFF CASE

February 24th, 2016

 

In the case of Alpha Home Appliance Sdn. Bhd. v NSB Home Appliance and NSB Lighting Sdn. Bhd, the High Court allowed the Plaintiff’s claim and the Defendants’ counterclaim is dismissed with costs.

By way of background, Alpha Home Appliance Sdn. Bhd. (hereinafter referred as Plaintiff) a company incorporated in Malaysia and deals with the research and development, manufacture and distribution of home appliances, in particular to fans and water heaters. NSB Home Appliance is (hereinafter referred to as “the 1st Defendant”) is a company incorporated in Malaysia and its business includes the manufacture, import, export and distribute all kinds of home appliances and NSB Lighting Sdn. Bhd. is (hereinafter referred to as “the 2nd Defendant”) nature of business is trading in electrical light fittings.

The Plaintiff registered its Alpha Fan design (hereinafter referred to as “the Plaintiff’s Alpha Fan) with the Malaysian Industrial Design Registration Office which is under the jurisdiction of the Intelelctual Property Corporation of Malaysia (MyIPO). The application was granted on 21 August 2008. The Plaintiff Industrial Design Registration as assigned by MyIPO is No. MY07-1270-0306 (hereinafter referred to as “Plaintiff’s ID”).

The Plaintiff had filed a suit against the Defendants for infringement and passing off. Meanwhile, the High Court considered the Defendants’ counterclaim to revoke the Plaintiff’s ID that is whether the Plaintiff’s ID registration is valid.

The Defendants relied on Section 27(1) of the Act for revocation which says that “at any time after the registration of an industrial design, any person may apply to the High 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 disclosed to the public prior to the priority date of the application for registration of the industrial design”.

In this case, the High Court considered the view that Plaintiff’s ID lack of novelty as the Alpha Fan was published and sold before the registration. The High Court relied on principles as summarised in Russell-Clarke and Howe on Industrial Design (7th Ed) which says “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”.

Plaintiff submitted that the Defendants have traded offer for sale and keep any article “ASTA 56” which applies to the industrial design of Plaintiff’s Alpha Fan. The High Court looked at whether “ASTA 56” applied to Plaintiff’s Alpha Fan. In order to prove that the Defendants have applied or imitated Plaintiff’s Alpha Fan, Plaintiff submitted the design can be examined on the certificate of registration.

Plaintiff also submitted that the novelty statement is made to protect the shape of the Alpha Fan which comprises three parts:

  • Bottom part of the housing design in round shape;
  • the motor housing covering the motor, metal arms which hold the blades and motor of the fan which is design in round shape; and
  • covering the down rod of a fan which is designed in curved cone.

The High Court held that after considering the both the Plaintiff and Defendants submission and evidence, the High Court found Plaintiff’s Alpha Fan is a ‘round ball shape’.

Finally, the High Court found that the shape, configuration, pattern and ornament of the Defendants’ ‘ASTA 56’ are an obvious imitation of the Plaintiff’s Alpha Fan.