The protection of engineering designs by way of copyright and passing-off in Malaysia was dealt with by the High Court in Malaysia in the case of Hexagon Tower Sdn Bhd v Polydynamic Holdings Sdn Bhd & 3 Ors [2005] 4 AMR 384.

In this case the plaintiff company was in the business of manufacturing and selling rubber glove chlorination tumblers, which were named “Chlorination Tumbler”. One of its former employees upon leaving the plaintiff went on to form and set up various companies of which he became a director and shareholder. Those companies also manufactured a chlorination tumbler machine, which they called “Powder free PP Tumbler” or “FRP Tumbler”. The various companies formed by the former employee became the first, second and third defendants in the suit while the former employee himself became the fourth defendant.

In respect of the fourth defendant’s involvement with the plaintiff, he joined the plaintiff as an applications specialist in1990 and went on to be a branch executive in 1994 and left the plaintiff’s employment in 1996.

The defendants had in the first quarter of 1998 published and advertised their tumbler in a trade publication being the Malaysian Rubber Glove Manufacturer’s Association newsletter, and in their website. The plaintiff’s response was that it had the proprietary rights to their chlorination tumbler and to promotional leaflets containing product specification and photographic representations of the tumbler, and they took an advertisement in a leading local English language newspaper to that effect in July 1998.

The Plaintiff’s claim

The plaintiff then commenced this suit against the defendants and claimed that it had three causes of action against the defendants:

That the defendants had infringed the plaintiff’s artistic and literary copyright pertaining to the plaintiff’s tumbler by the defendants’ unauthorized and unlawful reproductions of the plaintiff’s tumbler;

That the defendants had converted the plaintiff’s artistic work and literary work pertaining to their own use, constituting the tort of conversion; and

That the defendants actions constitute a passing-off of the plaintiff’s tumbler.

In respect of the plaintiff’s claims, the relief sought was a permanent injunction, delivery up and destruction of the infringing products/works, discovery of the relevant documents, damages or an account of profits and costs.

Infringement of Copyright

Subsistence of Copyright

As to the first cause of action being infringement of copyright, the first issue is whether there is copyright as claimed. Here the plaintiff claimed that it was the owner of the artistic works in the form of the two-dimensional technical and engineering drawings and the three-dimensional reproduction of the drawings, being the plaintiff’s Chlorination Tumbler. The plaintiff also claimed that the promotional leaflet contained a photographic representation and product specification of the plaintiff’s tumbler and that the photographic representation of the plaintiff’s tumbler was a literary work, the copyright of which was being infringed by the defendants.

On the artistic copyright issue, the first issue the court delved into by the court was whether the plaintiff’s drawings constitute artistic works that are capable of copyright protection. In this respect the court was aided by section 3 of the Copyright Act 1987, which defined “artistic work” as being “a graphic work, irrespective of artistic quality”, as well as the definition of “graphic work” which is said to include “any painting, drawing, map, chart or plan”.

The court was further fortified by the case of Peko Wallsend Operations & Ors v Linatex Process Rubber Bhd [1993] 1 MLJ 225, where the High Court had determined in the affirmative that two-dimensional engineering drawings were capable of being eligible for copyright protection and more importantly held that “the copyright protection has been extended to cover finished products (three-dimensional) as well which had been manufactured from the drawings.” The court therefore affirmed the Linatex decision and held that the plaintiff’s tumbler in its three-dimensional form enjoys copyright protection.

Ownership of Copyright

On the issue of ownership of copyright, the court reviewed the evidence and was satisfied that the authors were employed by the plaintiff and the fact that the plaintiff had contributed to the authors pension fund was considered good evidence. The defendants contention that one of the authors was a director of the plaintiff and so could not be considered to be under employment was rejected by the court who upheld an earlier Malaysian decision that a company director can also be under employment, and that the actual job functions have to be looked at to determine whether a person is under employment or not.

Copyright Infringement

The court here found that there was infringement as the plaintiff had not consented to the reproduction and sale of the tumblers and there was clear objective similarity between the defendants’ tumblers and the plaintiff’s tumblers and a clear causal connection between the fourth defendant and the plaintiff.

The court applied the “objective similarity” test when comparing the defendants tumblers with the plaintiff’s tumblers and also held that there was a causal connection between the defendants and the plaintiff as the fourth defendant was employed by the plaintiff, which showed both opportunity and motive for the infringement.

Conversion

As to the second cause of action, the court held that the as defendants had manufactured and sold tumblers that were an infringement of the plaintiff’s copyright, the defendants’ tumblers were an unlawful reproduction and so the defendants were held to have converted the tumblers for their own use, and were therefore liable for the tort of conversion.

Passing – off

On the third cause of action, the court held that the plaintiff had gained considerable goodwill from the sale of the tumblers as they were selling well and many customers were repeat customers. The court felt that the customer had become accustomed to the get-up, colour, shape, and design of the plaintiff’s product specifically in relation to the powderless rubber glove industry.

The court held that the defendants’ advertisements in the rubber glove industry newsletter and their website was likely to lead the public to believe that the defendants were offering for sale the plaintiff’s tumblers. The defendants’ contention however was that customers would go for function rather than shape or design, and that the defendants’ tumblers functioned differently. The court however felt that once a customer was familiar with a particular shape or design, he would be inclined to trust an identical or similar looking tumbler.

The court therefore held that elements required in proving passing-off in the English landmark English decision of Erven Warnick BV & Anor v J Towend & Sons (Hull) Ltd & Anor [1980] RPC 31 were fulfilled, and thereby found against the defendants.

Relief

The court therefore granted a permanent injunction and the other relief sought by the plaintiff.

Impact of the case

Although the court’s findings in respect of copyright infringement are not ground breaking, it cements the position that there is copyright protection for industrial products by way of three-dimensional copying of the copyright owner’s two-dimensional design. This position has been somewhat modified for designs that were created post 1st September 1998 and are created now, but still remains very relevant for a large number of products which were designed prior to that date (as will be discussed below).

The decision in respect of passing-off has important repercussions for companies which may not have design or copyright protection, as it allows an industrial product with an identifiable shape which has been sold for long enough to claim to goodwill and prevent misrepresentation by a passing-off action. The traditional area of using passing-off to protect get-up in terms of packaging is now being broadened by the courts to encompass designs of industrial products. This is a welcome development in the law which gives owners of intellectual property some flexibility in protection.

Change in the law

It has to be noted that the Hexagon case discussed above was filed in 1998, and may not reflect the current position in respect of copyright protection for industrial products. This is as with the coming into force of the Copyright Amendment Act 1996 on 1st September 1998, copyright protection is denied for a design which is capable of being registered as an industrial design, but was not registered as such, and if there was any application of that design to an article and the article has been reproduced more than 50 times by an industrial process. Therefore if there is artistic copyright in a design drawing, but more than 50 articles from that drawing has been reproduced by an industrial process, no copyright protection will ensue as it can only be protected by an industrial design registration.

With the new law, the owner of copyright in design drawings such as the plaintiff in the Hexagon case would only have protection if he had registered his design as an industrial design.

However an important point to note is that the Copyright Amendment Act 1996 contained a saving provision which provided that nothing in the Amendment Act shall affect works in which copyright subsisted immediately prior to the date of coming into force of the said Act, and the Copyright Act as unamended shall apply to such works. Therefore if copyright subsisted in a work prior to 1st September 1998, the three-dimensional reproduction of a two-dimensional design drawing would still be an actionable infringement today. This means that notwithstanding the change in the law a significant amount of industrial products are still protected by copyright.

However in terms of new designs of industrial products, it is imperative that an industrial design registration be done in Malaysia to ensure protection for the owner.