My brand is not registered. Can I still sue for passing off?

Many small businesses trade for years without registering their name. When a competitor starts using something confusingly close, the question is whether the law protects a brand that was never registered.

What is passing off?

Passing off is a common law claim. It stops one trader from presenting its goods or services as if they were connected with another trader's business. It protects goodwill, the attractive force that brings in customers, rather than the name itself.

The Trademarks Act 2019 does not replace it. For example, the Registrar must refuse to register a mark if its use in Malaysia could be prevented by a rule of law protecting an unregistered trademark, "including under the law of passing off" (section 24(4)).

What must I prove?

Courts usually look for three elements:

• Goodwill: customers in Malaysia associate the name, logo, packaging or get-up with your business.
• Misrepresentation: the other trader's conduct is likely to lead the public to believe its goods or services are yours or connected with you. Intention to deceive is not required.
• Damage: you have suffered, or are likely to suffer, loss, such as diverted sales, harm to reputation, or loss of control over your brand.

How is this different from trademark infringement?

With a registered mark, the owner relies on the registration and the tests in section 54. In passing off, you must prove your reputation with evidence, and the claim is limited to where that goodwill exists. Passing off can also protect things a registration may not cover, such as the overall look of a shop or product.

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What evidence helps?

• Sales records and invoices showing how long and where you have traded.
• Advertising, social media following, press coverage and awards.
• Photos of your signage, packaging and product get-up over time.
• Examples of customers confusing the two businesses: wrong orders, enquiries, misplaced reviews.
• Dated screenshots and test purchases of the other trader's goods.

What can the court order?

Typical remedies are an injunction stopping the misleading use, damages or an account of profits, and orders to deliver up or destroy offending materials. An interim injunction may be sought where the harm is urgent; see urgent injunctions.

Should I also register my mark now?

Registration is a separate administrative process with MyIPO and does not decide the dispute. Our work is the dispute itself. If the other trader has already registered a confusingly similar mark, you may be able to challenge it in court; see bad-faith registrations.

Example

A family restaurant has used the name "Mak Teh Corner" in Batu Pahat for twelve years. A new outlet opens in town as "Mak Teh's Corner" with similar colours. Regular customers ask whether it is a new branch. The restaurant keeps those messages, its old menus and media features, and brings a passing-off claim.

Common mistakes

• Assuming no protection exists without registration.
• Having no dated records of when the name was first used.
• Delaying until the other business is established.
• Posting accusations online instead of sending a proper letter.

When to speak to a lawyer

Speak to a lawyer when customers are being misled or a competitor has copied your name or look. See IP and trademark disputes or contact us.

Frequently asked questions

Do I need to prove the other trader meant to copy me?

No. Intention is not required, although evidence of deliberate copying can support the claim.

Can a foreign business sue for passing off in Malaysia?

It must generally show goodwill among customers in Malaysia. A well-known foreign mark may also have protection under section 76 of the Trademarks Act 2019.

Can passing off protect packaging or shop design?

It can, where customers recognise that get-up as indicating your business and the other trader's similar get-up is likely to mislead them.

Sources & fact check

Legal points in this article were checked against the primary sources below. The law can change; this is general information, not legal advice.

1. Trademarks Act 2019 (Act 815), AGC Laws of Malaysia
2. Intellectual Property Corporation of Malaysia (MyIPO), official portal
3. Rules of Court 2012 (P.U.(A) 205/2012), text published by the Malaysian Bar, including Orders 12, 13, 18, 19 and 93

Fact-checked on 17 Oct 2026