In depth
This proposed amendment is largely in line with ASEAN obligations as set out in the latest ASEAN IPR Action Plan 2016-2025 ("Plan"). One of the initiatives in this Plan is for the ASEAN member countries to accede to the Hague Agreement. Essentially, the Hague Agreement establishes an international system administered by the World Intellectual Property Organisation (WIPO), known as Hague System. This system allows for the registration of up to 100 designs through a single international application.
The key proposals and amendments to the Act are summarised below.
- Recognition of a wider scope of protection.
This would include interior design, exterior design, non-physical products and complex products in line with the international practice.
- Enhancing the criteria of registrability.
The criteria in determining registrability will be strengthened so as to allow a more effective registration system of new and creative designs while at the same time reinforcing the quality of the registered designs.
- Clarification on priority date.
The priority date claimed shall have no effect on the date of filing of an application and will only be used for the purposes of search examination.
- Introduction of substantive examination.
As part of the effort to provide consistency with the international practice, new provisions on substantive examination are proposed to better clarify the filing and registration procedures.
- Offenses.
The creation of offenses for the infringement of industrial design rights is proposed.
- Accession to Hague Agreement.
The establishment of the Hague System which will assume a mechanism for international registration of an industrial design in multiple jurisdictions through a single application with minimal formalities.
- Element of deferment of publication.
Provision on deferment of publication in line with Hague Agreement is proposed.
- Guideline.
Guidelines aimed to assist in the procedures of filing and registration with force of law are proposed.
- Agent.
The requirement to appoint an agent, which may include examination in the field of industrial design is proposed.
Conclusion
These are important amendments to the Act which enable Malaysia to keep up with the current demand and protection of new emerging and dynamic innovative designs. Those engaged in industrial designs are encouraged to provide feedback on the proposed changes to MyIPO.
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