I received a letter accusing me of trademark infringement. What should I do?

A letter arrives from another company's lawyers: stop using your brand name, destroy your stock, pay damages, sign an undertaking within seven days. It is alarming, but a careful response protects your position.

Step 1: read what is actually claimed

Note the sender, the trademark relied on (with its registration number), the goods or services said to be covered, what you are accused of doing, the demands made, and the deadline. Keep the envelope or email header showing when it arrived.

Step 2: check the registration

A claim for infringement under the Trademarks Act 2019 needs a registered trademark (section 56). Check the registration details and status through MyIPO's records: the owner, the classes and the goods or services listed, and whether it is still in force. Registration lasts ten years and must be renewed (section 39).

If the mark is not registered, the sender may instead rely on passing off, which requires proof of goodwill; see passing off.

Step 3: compare the marks and the goods

Infringement under section 54 depends on whether your sign is identical or similar to theirs, whether your goods or services are identical or similar, and, in most situations, whether there is a likelihood of confusion. Look honestly at how you use your sign, where you sell, and who your customers are.

Step 4: consider the exceptions and challenges

• Section 55 exceptions: for example, good-faith use of your own name or business name, or good-faith descriptive use.
• Earlier use: if you used your mark before their registration, that history matters.
• Non-use or invalidity: a registration that has not been used for three years without proper reason may be liable to revocation (section 46), and a registration made in breach of the refusal grounds may be declared invalid (section 47).

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Step 5: know about groundless threats

Section 61 gives a person aggrieved by threats of trademark infringement proceedings the right to seek a declaration that the threats are unjustifiable, an injunction against them, and damages for loss caused. The threatener can defend this by showing the acts complained of are in fact infringement, but the threatened party can still succeed if the registration is invalid or liable to be revoked.

The section does not cover threats about applying the mark to goods or packaging, importing such goods, or supplying services under the mark, and a mere notice that a mark is registered is not a threat (sections 61(1) and 61(5)). Whether a letter is an actionable threat depends on its wording.

Step 6: reply in writing, on time

A reply might deny infringement with reasons, ask for the registration details and evidence, propose changes without admitting liability, or reserve your position on groundless threats. Do not sign an undertaking or admit liability without advice; undertakings can be enforced.

Example

A Johor Bahru online shop selling "Lumi" candles receives a letter from the owner of "Lumee" registered for cosmetics. The shop checks the registration, notes that candles are not listed, keeps records of its own use since 2021, and replies denying infringement, while asking for the basis of the claim.

Common mistakes

• Ignoring the letter until a writ arrives.
• Signing the sender's undertaking without reading it closely.
• Destroying stock before the position is clear.
• Responding with insults or public posts.

When to speak to a lawyer

As soon as you receive the letter, especially if it demands an undertaking or a payment. See IP and trademark disputes or contact us.

Frequently asked questions

Is a letter of demand the same as being sued?

No. Court proceedings start with a writ or other originating process. A letter is a warning, but a careless response can affect the later case. See received a writ of summons.

Can I keep selling while I reply?

That depends on the strength of the claim and the risk of damages building up. Take advice quickly.

What if the letter came from a competitor directly, not a lawyer?

The same checks apply. A threat can come from anyone, and section 61 may still be relevant.

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