My brand is well known. Is it protected in Malaysia even without registration?

Some brands are known to Malaysian consumers long before their owners open a shop here. When a local trader copies such a name, the owner may not be able to rely on registration or local goodwill. The Trademarks Act 2019 gives well-known marks a special status.

What is a "well-known trademark"?

Section 4 defines it as a trademark that is well known in Malaysia and belongs to a person who is a national of, domiciled in, or has a real and effective business establishment in a Convention country, whether or not that person trades or has goodwill in Malaysia. In deciding whether a mark is well known, the Registrar or the court applies the prescribed criteria, which look at matters such as how widely the mark is known in the relevant sector of the public.

Protection without registration

Under section 76(1), a well-known mark is protected:

• whether or not it is registered, or an application has been made, in Malaysia; and
• whether or not the owner carries on business or has goodwill here.

What can the owner stop?

The owner can seek an injunction against use in Malaysia, in the course of trade and without consent, of a mark identical or similar to the well-known mark, or to an essential part of it (section 76(2)):

• on identical or similar goods or services, where the use is likely to cause confusion; or
• on any goods or services, where the use would indicate a connection with the owner and is likely to damage its interests.

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Invalidating conflicting registrations

The owner can ask the court to invalidate a registered mark that is identical or similar to the well-known mark, even for different goods, where the use would indicate a connection, cause confusion and damage the owner's interests (section 76(3)). It can also apply on the ground of fraud or misrepresentation (section 76(4)). See invalidating a registration.

Limits

• Earlier use: if the other party's use began before the mark became well known in Malaysia, the injunction right does not apply unless that use was in bad faith (section 76(5)).
• Acquiescence: the owner loses the injunction right if it has knowingly acquiesced in the use for a continuous five years, unless the use was in bad faith (section 76(6)).
• Bad faith: the court considers whether the user knew or had reason to know of the well-known mark when it began using it (section 76(7)).
• Honest use: section 77 permits certain honest uses, such as a person's own name.

Evidence

Expect to prove the mark's reputation in Malaysia: sales, advertising reaching Malaysian consumers, media coverage, social media following, surveys, and registrations or enforcement elsewhere.

Example

An overseas café chain with no Malaysian outlets finds a Klang Valley café using an almost identical name and logo. It gathers evidence of Malaysian awareness through travel, media and online following, and seeks an injunction under section 76, arguing that the café owner knew of the chain when it opened.

Common mistakes

• Assuming fame overseas automatically means "well known in Malaysia".
• Waiting years after learning of the copy.
• Relying on assertion instead of evidence.
• Ignoring registration, which remains the stronger route.

When to speak to a lawyer

When a well-known brand is copied in Malaysia, or when you are accused of copying one. See IP and trademark disputes or contact us.

Frequently asked questions

Can a Malaysian company's mark be well known?

The definition refers to owners connected with a Convention country, and Malaysia is a party to the Paris Convention. Whether a particular mark is well known depends on evidence.

Do I still need to register?

Registration gives clearer and broader rights, including infringement and border measures. Well-known status is a fallback, not a substitute.

Can I also claim damages?

Section 76 refers to an injunction. Damages may be pursued through other causes of action, such as passing off, where the facts allow.

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