Case: Airaz Technologies Sdn Bhd vs. Padzilah Enda & Anor [2024] MLJU 655
Key Details of the IP Case:
Airaz Technologies Sdn Bhd filed a lawsuit against Padzilah Enda and another defendant, seeking to revoke three industrial design registrations under the Industrial Designs Act 1996. These designs were associated with "telekung" (religious garments) and registered under the brand "Siti Khadijah." The plaintiff aimed to invalidate these registrations on the grounds that the designs were not new. In response, the defendants counterclaimed, alleging that the plaintiff's "Telekung Suqainah Lite" infringed their registered design "Harmoni."
Legal Arguments and Rulings:
The IP court first addressed the plaintiff's request to revoke the registrations under Section 27 of the Industrial Designs Act 1996. For a successful revocation, the plaintiff needed to prove that the designs were either not new or were procured through unlawful means. The plaintiff argued that the designs lacked novelty because similar designs had been disclosed to the public before the registration dates.
However, the IP court found that the plaintiff failed to provide sufficient evidence of prior public disclosures that would render the defendants' designs non-novel. Specifically, the IP court noted the lack of any tangible evidence, such as samples or documents, to support the claim that similar designs were already in the market. As a result, the court dismissed the plaintiff's claim for revocation of the registrations .
On the counterclaim, the IP court evaluated whether the plaintiff's "Telekung Suqainah Lite" infringed the defendants' registered design "Harmoni" under Section 32 of the Act. The court applied the "visual eye appeal" test, which considers whether the designs in question appear similar to an average consumer, disregarding functional elements. After closely examining the physical samples, the court concluded that the essential features of the defendants' "Harmoni" design were indeed present in the plaintiff's "Telekung Suqainah Lite." The IP court determined that these similarities were not coincidental but the result of copying and imitation, leading to a finding of infringement .
The court supported its ruling by referencing the established principles from Dart Industries Inc v. CMN International Sdn Bhd [2019] MLJU 1252, which emphasise that even if the author of an alleged infringing design did not have direct knowledge of the registered design, an imitation could still be found if the visual comparison shows substantial similarity. Consequently, the court allowed the defendants' counterclaim for infringement and awarded costs .
Practical Implications:
This case highlights the importance of gathering robust evidence and thorough documentation when challenging the novelty of registered designs. Businesses must ensure they can substantiate claims of prior art with concrete evidence, such as physical samples or detailed records of prior disclosures.
Additionally, the ruling underscores the necessity for companies to respect existing registered designs to avoid infringement claims, which can result in significant legal and financial consequences.
My Comments:
The court's meticulous analysis of design features and the application of the visual eye appeal test provide critical insights for businesses involved in product design. This case serves as a reminder of the importance of robust legal strategies and thorough preparation in IP litigation. Companies should maintain comprehensive records of design development and conduct thorough prior art searches to safeguard against infringement and invalidation claims.
If you have any questions regarding the article, please feel free reach out to our managing partner, Eugene Yeong.
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