LOOKING GOOD The Appeal of Designs in Getting

LOOKING GOOD The Appeal of Designs in Getting Noticed by the Customer Chew Kherk Ying Wong & Partners is a member of Baker & Mc. Kenzie 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 3 D and 2 D 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 & Mc. Kenzie 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

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