By Hemanisha Baskaran
CHIC?? VOILA?? What do these two words have to do with a hijab? Well, in this case – plenty! In fact, “CHIC” and “VOILA” are the wrap styles under the well-known Bokitta Hijab.
In 2019, the Kuala Lumpur High Court dealt with a patent infringement case involving the infringement of an instant hijab under the Patents Act 1983. It was the case of Mohammad Mubde Absi & Ors vs Hyat Collections Sdn Bhd & Ors.
Who were the plaintiffs?
The plaintiffs (Mohammad Mubde Absi, Hala Absi, Mona Absi & Nadra Absi) are the co-owners of the Bokitta hijab that has been granted a Malaysian Patent (No. MY-153705-A) (the ‘705 patent). Obtaining patent rights for a clothing article is unique. Getting patent rights for a headscarf better known as “hijab” makes it much more unique when it comes to the fashion industry. The second plaintiff, who is the R&D director of a Lebanese company, Bokitta Offshore SAL or “Bokitta Co”, was one of the co-designers of the Bokitta hijab and a co-inventor of the ‘705 patent. The plaintiffs manufactured the Bokitta hijab, marketed and sold them worldwide, including in Malaysia.
What is the infringed patent all about?
The “Ready-To-Wear Headscarf” protected by the ‘705 patent is an instant, pinless, ready-to-wear hijab that not only covers the head and neck of a wearer, but also maintains a wrapped formed style of an ordinary scarf that is commonly worn by women.
The Bokitta hijab solved problems related to traditional hijabs, such as:
- longer time needed to wrap and fix a traditional headscarf into a proper shape and form;
- a lot of fabric needed to wrap a traditional headscarf around the head and neck of a wearer, which may be uncomfortable for the wearer; and
- the use of pins to wrap a scarf around the head and keep it in place.
The Bokitta hijab was made ready-to-wear in a pre-wrapped state and does not require the use of pins to hold it in place. This makes it easier to be worn by any person in less than a minute without any assistance and it also holds a consistent shape.
Who were the Defendants?
The first defendant, Hyat Collections Sdn Bhd, was a Malaysian company dealing with the import and export of textiles. The second and third defendants were the directors and shareholders of the first defendant. The defendants were allegedly selling the Bokitta style pinless hijab under their own brand.
How was the infringement detected?
The third defendant was a customer of the plaintiffs’ local distributor, Bokitta Asia and purchased Bokitta hijabs from the distributor. Around mid-2016, the plaintiffs were alerted by its Malaysian distributors that several third parties were selling counterfeit Bokitta hijabs. The plaintiffs investigated and found a closed Facebook group created by the third defendant under the name of Hyat Hijab.
The plaintiffs arranged for two trap purchases from Hyat Hijab and discovered that the prices of the Hyat hijabs were 30% to 40% cheaper than the Bokitta hijab, leading to losses for the plaintiffs’ business in Malaysia. The plaintiffs alleged that the defendants had infringed the ‘705 patent by distributing and selling Hyat hijabs and initiated legal action against them in Malaysia.
The Legal Proceedings…
The plaintiffs applied for relief against the defendants for infringement of the ‘705 patent and the defendants denied copying and filed a counterclaim to invalidate the ‘705 patent. Both parties called in their expert witnesses to testify in court. The plaintiffs called in expert witness SP2 as a person ordinarily skilled in the art (“POSITA”) . As a measure of counterclaim to invalidate the ‘705 patent, the defendants called in expert witness SD1 as a POSITA.
The issues considered by the Court were as follows:
i) Who was a notional POSITA with regard to the ‘705 patent?
ii) Whether the ‘705 patent could be invalidated on any of the following grounds:
- Is the Bokitta hijab an “invention” under section 12(1) of the Patents Act;
- Whether the said hijab is considered “new” within the meaning of section 14(1) of the Patents Act;
- Does the Bokitta hijab involve an “inventive step” as per section 15(1) of the Patents Act; and
- If the Bokitta hijab complied with section 23 of the Patents Act read with regulations 12(1)(c), (f) and 13(1) of the Patents Regulations 1986; and
iii) If the ‘705 patent was valid, whether the defendants’ sales of the Hyat hijabs had infringed the ‘705 patent.
The person skilled in the art for the ‘705 patent should be ordinarily skilled with regard to the hijab and should have qualification, knowledge and/or experience in the fashion industry related to the hijab. SP2 was accepted as POSITA in the Court based on her qualifications in the fashion industry and her experience as a lecturer, fashion designer and consultant in various projects related to the fashion industry. However, defendants’ SD1 was not accepted as a POSITA since she neither had a qualification in the fashion industry nor experience as a fashion designer. Although the evidence of an expert witness who is not accepted as a POSITA is admissible, the Court does not attach any weight to it.
During the legal proceedings, the disclosure of the ‘705 patent was considered as an “invention” within the meaning of section 12(1) of the Patents Act. The judge mentioned that the term “technology” in section 12(1) of the Patents Act covers ideas related to the solutions provided by the Bokitta hijab. With regard to the novelty of the invention, the Bokitta hijab is found to be novel based on the following reasons:
- Based on the plaintiffs’ expert opinion, there was no single document before the priority date that disclosed all the features stated in independent claim(s) of the ‘705 patent;
- There was no evidence that a POSITA would be able to design the Bokitta hijab based on a single prior art that has disclosed all the features as stated in independent claim of the ‘705 patent; and
- By applying the “reverse infringement test”, there was no proof that the prior art constituted an infringement on the ‘705 patent.
The defendants thereby failed to prove to the Court that the Bokitta hijab should be invalidated on the ground of lack of novelty under section 56(1) and (2)(a), and on the ground that Bokitta hijab was not an “invention” under section 12(1) of the Patents Act.
In terms of the trap purchases from Hyat Hijab, the plaintiffs proved that the defendants had sold Hyat hijabs in contravention of the ‘705 patent. The Court was satisfied that the first and second Hyat hijabs breached the claims of the ‘705 patent..
- This patent infringement case over a clothing is the first of its kind in Malaysia. This provides a positive affirmation to the fashion industry, which relied mainly on Designs and Trademarks, to now protect their creations that solve a specific problem through Patent rights too.
- In case you ever get into a legal battle, this judgement also serves as a reminder to choose expert witnesses wisely and from domains that are relevant to the technical domain of the patent such that the witnesses opinion is referred by the Court while arriving at the judgement.
- Section 12(1) of the Malaysian Patent Act defines meaning of “invention” as an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.
This judgement, by applying a purposive interpretation to the term “technology”, broadened its scope such that it may be interpreted as practical application of knowledge especially in a particular area or particular field of endeavor. As the judgement says – if the purposive interpretation is not applied then, “…there will be an injustice to fashion designers who have come up with ideas which permit in practice solutions to specific problems in the fashion industry but such ideas cannot be protected and exploited by those fashion designers by way of patents.”