How to Challenge an Industrial Design Registration in Malaysia?
Imagine you have been selling a product for many years. One morning, your competitor publishes a newspaper notice claiming exclusive rights over its design.
You would probably be furious. Your first instinct would be to look for an objection window to challenge the registration.
Trade marks have one. The application is advertised, and you have a period to oppose it before it proceeds to registration.
You might assume that industrial design registration in Malaysia works the same way.
It doesn't. There is no objection window before an industrial design is registered.
Does that mean there is no way to challenge an industrial design registration in Malaysia?
Not at all. The challenge simply happens after registration, not before.
EXAMPLE: How was a registered incense coil design struck off the Register?
Here’s what happened in the case Koay Kar Kheng (as the public officer of Persatuan Pedagangan Barang-Barang Sembahyang Malaysia) v Rong Qiang Incense (M) Sdn Bhd [2013] 1 LNS 123.
In November 2006, an incense company called Rong Qiang Incense filed an application to register the design of an incense coil. The design was registered and quietly published.
For four years, nothing happened.
Then, on 17 November 2011, Rong Qiang placed a warning notice in Sin Chew Daily, claiming exclusive rights over the design.
Imagine you are a trader who has sold incense coils for decades, and you read that notice over breakfast. The coil in the picture looks exactly like the ones on your shelves, the ones your father sold before you. Suddenly, a product your whole trade has always made now appears to belong to one company.
That was how members of the Persatuan Pedagang-Pedagang Barang-Barang Sembahyang Malaysia, a trade association of prayer-article traders, felt. Worried they could no longer make or sell incense coils, they took the matter to their association.
The association tried the polite route first. In December 2011, it wrote to Rong Qiang asking it to give up the registration voluntarily. In February 2012, it wrote again, this time through its solicitors.
In March 2012, Rong Qiang replied. It refused.
So the association, through its public officer Koay Kar Kheng, went to the High Court and asked for the registration to be struck off because the design had never been new.
Rong Qiang fought back on two fronts. First, it argued that the association had no standing to bring the case at all. Second, it argued that the older incense coils were not identical to its registered design.
It looked like a registered owner with a certificate in hand against a group of traders who had never raised a formal objection.
But the traders had something better than an early objection. They had history.
They brought a statutory declaration from a local incense manufacturer confirming that identical incense coils had been imported and sold in Malaysia since the 1970s. They produced photographs of incense coils taken at local Buddhist temples in 2004, images from the association's own earlier publications, and a Chinese newspaper advertisement for incense coils from 1987, almost twenty years before Rong Qiang filed its application.
On 30 January 2013, the High Court ruled against Rong Qiang on both points.
The association did have standing, because its members' livelihoods were directly affected by the registration.
And the design was not new. The older coils did not need to be identical. It was enough that they differed only in immaterial details or in features commonly used in the trade.
The court ordered the Register to be rectified by expunging the entire entry.
Notice what won the case. The traders did not win because they objected early. They could not have. They won because their evidence was older than the design.
How do you challenge an industrial design registration in Malaysia?
The Industrial Designs Act 1996 ("ID Act") gives you two provisions.
Section 27 of the ID Act – Revocation. Any person may apply to the High Court at any time after registration. You can ask the court to revoke the registration because the design was not new: it had already been disclosed to the public before its priority date. You can also ask for the registration to be cancelled because it was procured by unlawful means.
Section 24 of the ID Act – Rectification. This section is for a person aggrieved by or interested in an entry in the Register. The entry must have been made "without sufficient cause", or be "wrongfully remaining" in the Register. That person may apply for an order expunging the entry. Under section 24(3), you can choose to make that application to the Registrar first, instead of going to court.
What is the "priority date"?
It is the date against which novelty is measured. Usually, it is the filing date of your Malaysian application. You may first file the same design in another convention country and then file in Malaysia within six months, claiming priority. If so, the priority date is that earlier filing date.
For example, suppose you first file your design application in Singapore on 25 August 2026. You then file in Malaysia on 25 September 2026, claiming the Singapore priority. Your novelty will be assessed as at the Singapore filing date, 25 August 2026.
How does revocation under Section 27 work?
Practically speaking, it is an application to the High Court by originating summons. A copy of the application must also be given to the Registrar on ID Form 7, under regulation 28 of the Industrial Designs Regulations 1999 ("ID Regulations").
You do not need to show that you are personally aggrieved. Section 27 allows any person to apply.
How do you prove the design was not new?
This is the deciding factor in most industrial design disputes.
Section 12(2) of the ID Act looks at what was disclosed to the public before the priority date. A design is not new if the same design was disclosed by then. The same applies to a design that differs from it only in immaterial details, or only in features commonly used in the relevant trade.
Disclosure is considered from a global perspective. The ID Act counts disclosure "anywhere in Malaysia or elsewhere". So if a design was disclosed in another country before the priority date, that can destroy the novelty of a Malaysian registration. It cuts both ways. If you showcased your own design overseas before filing in Malaysia, you may jeopardise your own registration too.
Disclosure also does not require a sale. In F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products Inc [2013] 1 LNS 380, the Court of Appeal invalidated a registered bottle design. Among other evidence, it relied on newspaper advertisements for a rival drink published in 2004 and 2005. It held that the physical bottle did not need to be produced.
What are "immaterial details" and "features commonly used in the relevant trade"?
Immaterial details are differences the eye would not treat as significant. Features commonly used in the trade are the standard variations every maker uses. If every difference from an earlier public design falls into one of these categories, the registered design is not new: Three V Marketing Sdn Bhd v Heng Capital Industries (M) Sdn Bhd [2011] 1 CLJ 394.
Can you go to the Registrar instead of the court?
Yes. Under section 24(3) of the ID Act, you may make a rectification application to the Registrar first. The exception is where an action concerning the design is already pending in court. Regulation 27 of the ID Regulations sets out the procedure:
You file ID Form 6 with the prescribed fee. You attach a statement setting out fully your interest and the facts you rely on, and a copy goes to the registered owner.
The owner has three months from receipt to file a notice of opposition with its grounds. If it files nothing, it is deemed to have no objection.
You have two months from receipt of that notice to file a counter-statement. If you do not, your application is deemed abandoned.
The Registrar gives both sides an opportunity to be heard through written submissions, then decides.
If either side is unhappy with the Registrar's decision, it may appeal to the High Court under section 46 of the ID Act.
Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd [2008] 10 CLJ 49 shows the route in use. The applicant asked the Registrar to expunge a registered design for an anchorage lug under sections 24(1)(a) and 24(3). It argued that the design was not new and was dictated by function. The Registrar decided the merits and dismissed the application. The High Court then dismissed the appeal, also on the merits. The application failed on the evidence, not for being brought in the wrong place. In fairness, the forum point does not appear to have been argued.
Is the court the more proper route for a novelty challenge?
Suppose you want to challenge an entire industrial design registration because it is not new. Is the court route under section 27 more proper than the Registrar route under section 24(3)?
It appears so, based on Arensi-Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2011] 5 CLJ 355. There, the Court of Appeal said at page 367:
"[48] In any case, s. 24(1) deals with rectification or correction of an entry, which is a part only of a registration but not the registration itself."
"[49] If the appellant or any person wishes to expunge or revoke the registration from the register (as what the appellant had prayed for) then s. 27(1) is the correct provision since it specifically deals with the expungement of the registration."
"[50] The fact that the appellant's application was founded on the appellant's belief that its design was prior art predating the priority date of the respondent's design strengthens the position that s. 27 is the correct provision to be utilised."
Nevertheless, we humbly take a different view. In our opinion, a person challenging a design for lack of novelty can still rely on section 24, including by applying to the Registrar under section 24(3). Section 24(1)(a) allows the expunging of "any entry made in the Register without sufficient cause". A design registered despite lacking novelty is, simply, an entry made without sufficient cause.
The incense coil case points the same way. It was decided after Arensi-Marley, and the High Court there described section 27 as the more appropriate provision. Even so, it held that the applicant need only succeed under either section. It then ordered the Register to be rectified by expunging the entry.
That said, Arensi-Marley remains a Court of Appeal decision. If you take the Registrar route, expect the registered owner to raise it. The Registrar may also refer your application to the court at any stage under section 24(4) of the ID Act.
So, is a registered design ever beyond challenge?
The absence of an opposition before registration does not leave you without a remedy. It moves the contest to after registration, and it changes what wins it. What matters is not how early you object, but how far back your evidence goes.
A certificate of registration tells you the forms were in order. It does not make the registration invincible. If you believe you have legitimate grounds, you are entitled to challenge it.
Is a competitor's registered design standing between you and your market?
Contact LAWENCO Today! We can assess whether your evidence supports a challenge and advise whether the Registrar or the High Court is the better forum. We can also handle the warning letters and takedown notices in the meantime.
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor
Disclaimer: This article is intended for general informational purposes only and does not constitute legal advice. As every situation is different, you should seek professional legal advice before acting or relying on any information contained in this article.
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