Entry 17

I realised that my previous journal posts are more towards infringement. I always thought about "will this and that amount to infringement" but what really is infringement and what are the possible remedies? I searched it out and I found that there is a cause of action for infringement against a person that, without a licence from or the consent of the owner of a registered design, applies the design or any obvious or fraudulent imitation thereof to any article in respect of which the design is registered; or imports, sells, hires or offers or keeps for sale or hire any such article.

Case law has held that ‘obvious’ means that it is immediately apparent to the eye that the offending design is an imitation. On the other hand, a ‘fraudulent’ imitation means that the offending design is not necessarily an obvious copy of the registered design; it may even contain differences engineered to disguise the copying, but which can nonetheless be deemed immaterial.

Apart from the registered owner, the plaintiff may be a licensee if it can prove that it previously requested the registered owner to sue and the latter refused or failed to act within three months. However, the owner’s right to join in such proceedings is not prejudiced. There is a statutory limitation period of five years from the act of infringement within which to commence action.

It takes about nine months from filing of a court action to setting down for trial. The entire proceedings until resolution may take around two years, depending on the case’s complexity.

Upon successful proof of infringement and defence of any counterclaim for revocation, the court may grant remedies including damages or an account of profits. An injunction may also be ordered to prevent further or imminent infringement. The court may refuse monetary relief if the defendant satisfies the court that at the time of the infringement, it was unaware of the registration and had previously taken all reasonable steps to ascertain whether the design had been registered.

source:https://www.worldtrademarkreview.com/portfolio-management/protecting-and-enforcing-design-rights-malaysia-0