A recently reported Malaysian case has illustrated the difficulties in accessing the merits of granting an interlocutory injunction based on infringement of a registered design, where similar registered designs are at issue.

An interlocutory injunction is commonly applied in order to prevent a defendant from selling potentially infringing products pending the determination of the merits of the case at trial. The plaintiff only needs to show triable issues in respect of his cause of action and that the balance of convenience is in favour of the granting of the interlocutory injunction.

It is not impossible for two similar designs to be registered at the Registry. Such an anomaly may arise due to the fact that pending design applications are subjected only to formalities examination. The matter is further compounded by the fact that there is no opposition period given for interested parties to object to the granting of registration. The only recourse for interested parties is to apply to the Courts for cancellation.

In Honda Giken Kogyo Kabushiki Kaisha v. Allied Pacific Motor (M) Sdn Bhd & Anor [2005] 6 CLJ 174, the plaintiff applied for an interlocutory injunction against the defendants relying on, among other things, its 5 registered designs in respect of its motorcycle. The defendants were selling motorcycles in Malaysia that had similar design features when compared to the plaintiff’s registered designs.

In deciding on the merits of the plaintiff’s application for an interlocutory injunction, the Judge made a finding of fact that there were clearly similarities between the defendants’ designs and the plaintiff's designs.

Nevertheless, an interlocutory injunction was refused. The Judge took into consideration the existence of another registered design belonging to an associated company of the defendants. The defendants claimed that they had relied solely on the registered design of their associated company as the source and authority to produce their motorcycles. Furthermore, on the issue of balance of convenience, the Judge was of the view that since the defendants had existing contracts with third parties, distributors and State Governments, the granting of an interlocutory injunction may interfere with the same and preferred maintaining the status quo.

In the circumstances, intellectual property rights (IPR) owners may be well advised to take active steps to monitor the publication of registered designs in order to challenge any design grants that may affect the enforcement of their registered designs.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.