Several notable cases in Malaysia have significantly influenced the protection of intellectual property within the country’s fashion industry.

Trade Mark

In 2019, the High Court of Kuala Lumpur (“Court”) saw a heated trademark battle between fashion powerhouse 30 Maple Sdn Bhd (‘Plaintiff”) and individual seller Siti Safiyyah binti Mohd Firdaus Chew (“Defendant’). At the heart of the dispute are headscarves and clothing accessories allegedly sold under trademarks that did not belong to the Defendant! The Plaintiff, holding registered trademarks in Class 25, accused the Defendant of peddling counterfeit products on social media and advertising goods that closely mimicked the Plaintiff’s brand. To prove infringement, the Court relied on key legal criteria, including whether the Defendant was an unregistered proprietor; used an identical or similar mark in trade; and created a false association with the rightful owner. This case serves as a stylish reminder that in the fashion world, intellectual property is serious business—copy at your own risk! This is also the first case where the Court discussed the three criteria under the old Trademarks Act 1976 in proving infringement.

Copyright

In a groundbreaking 2018 ruling, the High Court of Kuala Lumpur (“Court”) redefined copyright protection in fashion when Siti Khadijah Apparel (‘Plaintiff”) sued Ariani Textiles (“Defendant”) for copying its uniquely designed telekung. The Court tackled a key question, can religious clothing be copyrighted? Examining whether telekung qualified as a “graphic work” or “work of artistic craftsmanship,” it ruled that the Plaintiff’s detailed design drawings met the definition of “graphic work,” and the final product itself was an “artistic work” under Section 3 of the Copyright Act 1987 (“CA 1987”). Rejecting the argument that fashion designs lack copyright protection, the Court emphasized that the CA 1987’s broad definition of “graphic work” extends beyond conventional interpretations. Justice Wong Kian Kheong highlighted that Section 7(2A) of the CA 1987 protects works regardless of their purpose, meaning functionality alone does not bar copyright. With clear evidence of originality, six months of development, innovative design features, and extensive documentation, the Court ruled in favour of the Plaintiff, reinforcing that creative effort in fashion is worth protecting. This case shattered the myth that unregistered designs in Malaysia lack copyright protection, making it clear that in fashion, originality is not just a statement, it is a legal shield!

Patent

In Mohammad Mubde Absi & Ors v Hyat Collections Sdn Bhd & Ors, the High Court of Kuala Lumpur (“Court”) ruled in favour of the Plaintiffs, affirming the validity of Patent 705 and finding infringement of their ready-to-wear, pinless hijab (“Bokitta Hijab”). The key issues considered by the Court were whether the hijab qualified as an ‘invention’: whether it was ‘new’, and whether it involved an ‘inventive step’. The Court dismissed the Defendants’ counterclaim to invalidate the patent, finding that they failed to discharge their burden. It held that Patent 705 constituted an ‘idea’ solving various problems with traditional hijabs, meeting the definition of ‘technology’. The hijab was deemed novel, as no single prior art document disclosed all essential integers, nor could a notional person ordinarily skilled in the art design it based on prior art. Applying the Windsurfing test, the court also found an inventive step. Infringement was confirmed through the Essential Integers, Improver’s, and Actavis tests. This landmark case is the first patent infringement suit in Malaysia involving clothing and is expected to impact future fashion related patents, encouraging innovation and broader intellectual property protection in the creative industries.

Evolving IP Rights in Malaysia’s Fashion Industry

The Malaysian fashion industry encounters distinct challenges in safeguarding its creations through intellectual property rights. While industrial design law offers a form of protection, its application is often limited by cost, time requirements, and the novelty criterion, which can be difficult to meet in an industry driven by fast-changing trends and the reuse of traditional styles. The short lifespan of fashion items further discourages registration, especially for smaller designers. Despite these issues, industrial design registration grants exclusive rights and commercial advantages. Copyright law, on the other hand, protects only the expression of ideas and generally excludes fashion items deemed functional. However, the case of Siti Khadijah Apparel Sdn Bhd v Ariani Textiles & Manufacturing (M) Sdn Bhd has demonstrated that, under certain circumstances, fashion designs may be eligible for copyright protection, signaling a shift in how such rights may be applied in the industry.