In a major legal ruling for Malaysia’s apparel and modest fashion sectors, the Malaysian High Court ruled in favor of Siti Khadijah Apparel Sdn Bhd in an industrial design dispute against Airaz Technologies Sdn Bhd (owner of the Innersejuk brand).
Airaz Technologies initially filed suit to revoke the registered industrial design (RID) of Siti Khadijah’s flagship Harmoni Telekung. In response, Siti Khadijah filed a countersuit alleging that Airaz’s Suqainah Lite Telekung copied and infringed its registered design rights. The High Court dismissed Airaz’s revocation claim and upheld Siti Khadijah’s countersuit, ordering Airaz to pay RM1.7 million in total damages and profits.
Key Highlights & Judicial Findings
The High Court’s decision highlights fundamental principles governing industrial design enforcement in Malaysia:
- Substantial Reproduction of Essential Features: Through detailed visual examination, the Court determined that essential aesthetic features—specifically the unique geometric and functional construction around the head and chin area—were substantially copied in Airaz’s Suqainah design.
- High Financial Consequences for Infringement: Following damages assessment, the High Court ordered Airaz to account for RM1.21 million in lost profits, along with RM500,000 in compensatory/exemplary damages and costs, proving that industrial design rights carry severe financial weight.
- High Risk of Invalidity Challenges: Initiating an offensive suit to revoke a competitor’s registered design can backfire significantly if the court affirms the registration’s validity and finds active infringement on the countersuit.
- Aesthetic Appeal vs. Pure Functionality: The ruling re-affirms that functional garments incorporating distinctive, eye-appealing visual design features qualify for valid industrial design protection in Class 02 (Apparel).
Recommended Prosecution & Compliance Steps for Apparel Brands
To protect fashion innovations and manage design infringement risks effectively:
- Register Key Visual Designs Early: File for official Industrial Design Registration with MyIPO prior to public disclosure, marketing campaigns, or commercial sales to preserve novel visual elements.
- Execute Pre-Launch Design Clearance Audits: Conduct thorough searches on the MyIPO Industrial Design Register before introducing new garment cuts, headwear, or packaging styles to avoid infringing existing registered designs.
- Assess Essential Features in Product Reviews: Focus on overall visual impressions, aesthetic details, and essential design features rather than minor material differences when assessing potential infringement risks.
- Evaluate Revocation Strategies Carefully: Before challenging a competitor’s registered design, conduct a rigorous prior art search and infringement exposure audit to avoid high-value countersuits.
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