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2024 MarsdenLR 2155
HIGH COURT MALAYA KUALA LUMPUR
AIRAZ TECHNOLOGIES SDN BHD – Appellant
Versus
PADZILAH ENDA & ANOR – Respondent
[Civil Suit No: WA-22IP-41-09-2022]
The court ruled that the plaintiff failed to prove the lack of novelty in the defendants' registered designs and found that the plaintiff infringed the defendants' design, leading to the dismissal of the plaintiff's claim and the acceptance of the defendants' counterclaim.
Headnote:(A) Industrial Designs Act, 1996 – Sections 27 and 32 – Revocation of registered industrial designs – Plaintiff sought revocation of Defendants' designs under s 27, alleging lack of novelty – Court found Plaintiff failed to prove claims – Defendants counterclaimed for infringement under s 32 – Plaintiff's design found to infringe Defendants' registered design. (Paras 46, 60)
(B) Pleadings – Parties bound by their pleaded cases – Plaintiff confined its claim to s 27, could not invoke s 24(1)(a) without proper pleading – Court emphasized the importance of specificity in pleadings. (Paras 13, 24, 32)
(C) Infringement – Test for infringement based on visual appeal – Court compared designs visually, found Plaintiff's design imitated Defendants' design. (Paras 52, 58)
Facts of the case: Plaintiff sought to revoke three registered industrial designs of the Defendants, alleging they were not new. Defendants counterclaimed for infringement of one design. (Paras 2, 11)
Findings of Court: Plaintiff's action to revoke the registration of the Defendants' RID dismissed; Defendants proved infringement of their design by the Plaintiff. (Paras 46, 60)
Issues: Whether the Defendants' designs should be revoked under s 27 and whether the Plaintiff infringed the Defendants' design. (Paras 2, 46)
Ratio Decidendi: The Plaintiff failed to establish lack of novelty in the Defendants' designs; the Court applied the visual appeal test to determine infringement. (Paras 40, 52)
Result: Plaintiff's claim dismissed; Defendants' counterclaim allowed with costs.
Legal Category Hierarchy
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intellectual property
-
industrial designs
- revocation (Para 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46)
- infringement (Para 47, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 59, 60, 61, 62)
- novelty (Para 40, 41, 42, 43)
- pleadings (Para 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39)
- visual appeal (Para 51, 52, 53, 54, 55, 56, 57, 58)
- counterclaim (Para 47, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 59)
- designs (Para 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12)
- registered (Para 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46)
- damages (Para 61, 62)
- costs (Para 46, 59, 62)
-
industrial designs
JUDGMENT
[After A Full Trial]
A. Introduction
[1] In his book "The Art of War", Sun Tzu (544-496 BC), Chinese military general, strategist, philosopher and writer, wrote that "Attack is the secret of defence; defence is the planning of an attack". In modern times it has been adapted into the adage, "The best defence is a good offence". In German, it has been abbreviated even further, into 'gegenpressing', and has been applied to great success by another "general" and strategist, currently commanding a football club situated on one side of Stanley Park in Merseyside, England.
[2] The Plaintiff here looks to have taken Sun Tzu's principle on board. The Defendants between them have registered three industrial designs under the Industrial Designs Act, 1996 ("the Act") . Upon the Plaintiff receiving a demand from them to cease and desist from infringing one of them, the Plaintiff launched an offensive by filing this action to revoke all three of them under s 27 of the Act. The Defendants naturally counterclaimed against the Plaintiff for infringement of that one of its registered industrial designs under s 32 of the Act.
[3] If the Plaintiff is successful and the Defendants' three registered industrial designs are revoked, there would be no issue of infringement as there would be no registered industrial design to infringe. The flip-side is that, if the Plaintiff fails in that quest, it faces the possibility of being liable to the Defendants for damages and other relief for industrial design infringement, not to mention the costs of bringing this action.
[4] Given the fact that a successful revocation of the registered designs may decide the whole action and obviate the need to even consider the counterclaim for infringement, the issue of invalidation will be considered and decided first. However, before getting ahead of ourselves by diving into that issue, it may be opportune to first set out the salient facts.
B. Salient Facts
[5] The Plaintiff was incorporated on 18 August 2017. Its nature of business is "Menjual dan membekal pakaian tudung, jubah". Its products are marketed and sold under the brand name "Inner Sejuk". Trademarks for the same logo and word mark "Inner Sejuk" have been registered in 2017 in Classes 35 and 25, the latter being for "Clothing, footwear, headgear, innerware, underwear, all included in Class 25". Both trademarks are registered in the name of one Azrul Izzam Bin Kamarul Zaman ("Azrul Izzam") trading as Airaz Industries. However, even though Azrul Izzam is the Executive Chairman, Managing Director and shareholder of the Plaintiff and testified at the trial, the Plaintiff did not adduce any evidence of any of those trademarks being transferred or assigned by him to it and registered in its own name.
[6] The 2nd Defendant was incorporated almost seventeen years earlier on 2 November 2000 and the 1st Defendant is one of its directors. The nature of the 2nd Defendant's business is "To supply and selling all kinds of garments, clothes and scarf E-commerce and online, manufacturing and logistics, general trading & services, properties investment". Its products are marketed and sold under the brand name "Siti Khadijah".
[7] The Defendants' three industrial designs that are registered under the Act are in Class 02 for "Religious Apparel" (collectively "Defendants' RID"). The religious apparel here is the "telekung", a garment worn by women over their outer clothes when they perform their prayers. The registration details of the Defendants' RID are set out in Table A below:
[8] The three designs of the telekung have been developed into actual three-dimensional physical telekungs and have been respectively marketed and sold as "Moden 1", "Moden 2" and "Harmoni", all under the brand name "Siti Khadijah" (collectively, "Defendants' Telekungs").
[9] In November 2021, the Plaintiff began producing, marketing and selling a telekung as "Telekung Suqainah Lite" ("Plaintiff's Telekung").
[10] On 22 March 2022, Soli
