Novelty is a basic and fundamental requirement to obtain a design registration in Malaysia, termed here as industrial designs. This factor separates a design that has existed before against a design that is wholly new or original and has not yet been viewed by the public before. The novelty requirement also ensures that before any monopoly is claimed by the applicant, the design is considered new or original. It however has to be noted that the disclosure which defeats novelty in Malaysia is local and not worldwide in that there must not have been any prior disclosure to the public in Malaysia in respect of the design contained in the industrial application.
The recent Malaysian decision of CKE Marketing Sdn Bhd v Virtual Century Sdn Bhd  1 MLJ 767, set out that the design concerned must be looked at as a whole when comparisons are made with the prior art and that any evidence of prior art has to be strictly proven.
The facts of the case
In this case, the first defendant’s industrial design which was filed on 12 August 1999 pertained to the design of a glass door display chiller / freezer sold under the brand name of LINDEN, termed as “Refrigeration Apparatus” under the provision of the Industrial Designs Act 1996.
The First Defendant’s Design
The plaintiff here applied to rectify the Register of Industrial Designs contending that the Defendant’s industrial design registration had wrongfully remained on the Designs Register due to disclosure made to the Malaysian public prior to the said 12 August 1999 priority date due to the existence of other designs differing only in immaterial details.
The first defendant claimed that the existing models and design features of the refrigeration apparatus that existed prior to the date of the defendants’ design application were old and unappealing in appearance and therefore based on their background knowledge of the industry, the first defendant developed novel design features and applied it to its product and sold its new product into the market. The main features, which the first defendant contended were novel were a curved crescent like shape, display panel with aluminum frames and curved aluminum doorframes. The defendant’s design registration was further bolstered by a registered design, which the defendant had obtained under the UK Registered Design’s Act 1949.
The findings of the court
The High Court followed the requirements of novelty as set out in the English Court of Appeal decision of AMP Incorporated v Utilux Pty Ltd  RPC 397 which held that there must be substantial novelty or originality having regard to the nature of the article before it is registrable, and differences from the prior art in details which are immaterial are not enough reason to expunge a design registration. The question of differences in a particular case would depend on the nature of the article, the extent of the prior art and the number of previous designs in the field in question.
In view of the above, the court held that the question of novelty is dependent on the nature of the article and that a relevant consideration would be whether the article is a generic product that is commonly used by members of the public. In such circumstances, it is likely that the design features applied to an article are already individually in existence or in use prior to the formation of the said article. The paramount consideration for the court will be the totality of the design features taken as a whole and the overall appearance of the common article as compared with the articles that were disclosed to the public earlier.
The court also held that in relation to generic and common products the standard of novelty must be construed in accordance with the circumstances and followed the English decision of D Sebel & co Ltd v National Art Metal Pty Ltd  10 FLR 224.
Comparison of Designs
In this case the statement of novelty read: Novelty Resides In The Shape And Configuration Of The Design As Shown In The Circle In The Representations” and was accompanied by front and perspective photograph of the first defendant’s article as a whole with a side view photograph of the curved panel marked as circle A and a front view photograph of a curved panel marked as circle B to illustrate visual details.
In this respect the court held that the plaintiff’s attempt to isolate each of the designs marked as circles A and B in the design registration and compare the same individually against purported prior art was wholly misleading and incorrect in law. This is as the appealing appearance of the first defendant’s article was a result of a combination of a crescent like display with curved aluminum border frames and the door frames having a distinctive curve at the center with the two grooves forming its border.
Therefore when both the articles of the defendants as well as the plaintiff were viewed, the Judge held that there were sufficient and material differences between both the articles in question. The first defendant had taken reasonable amount of steps to illustrate the characteristics in the design that would naturally enhance or have impact on the visual appearance or appeal of the first defendant’s article.
Evidence of prior art
The court also held that there was no cogent evidence of the prior art as there was only a letter by a foreign company stating that a certain model of refrigerator was introduced into the Malaysian market in 1993 which the court found to be hearsay and it did not prove that the design concerned was disclosed to the Malaysian public at that time. As to a collection of sales brochures and a directory, this was also not accepted by the court as evidence of disclosure to the public. Therefore any evidence of disclosure has to be direct and cogent such as the sale of the infringing article before the court accepts the same.
In addition, the court held that although evidence of exports of a certain product or article can be shown in Malaysia, this would not be sufficient or cogent evidence that the product has been disclosed to the public.
The stand taken by the Malaysian High Court suggests that the issue of novelty has to be viewed in great detail and not plainly on a surface level. Accepting de minimis differences nor trade variants based on the slightest aspect of the article as was highlighted in the above decision in question would not be sufficient to argue that a design does not hold novelty.
The case holds firm that the issue of novelty of a design cannot just be viewed or examined on the minute details of the article alone but must also be examined as a whole and overall features of the article itself. The court will not view the article in isolation but rather view it as a whole. The court was therefore right to rule that the plaintiff’s attempt to isolate each of the designs from the first defendant’s article was wholly misleading and incorrect in law.