IP and trademark disputes

When someone trades on your brand, sells counterfeits or copies your work, the law gives you court remedies, including injunctions, damages, delivery up and orders to stop counterfeit imports. We act in contentious matters only, for brand owners and for businesses accused of infringement. We do not handle trademark filing or registration work.

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Trademark infringement

A registered trademark gives its owner the right to bring court proceedings against anyone who infringes it (Trademarks Act 2019, section 56). Infringement includes using, in the course of trade and without consent:

a sign identical to the trademark for identical goods or services; or
an identical or similar sign for identical or similar goods or services, where this is likely to confuse the public (section 54).

The court may grant an injunction, damages or an account of profits, and can order offending signs to be erased and infringing goods to be delivered up or disposed of (sections 56 and 58 to 60). Some acts are not infringement, for example certain honest descriptive uses (section 55). See similar trademarks and infringement.

Passing off: when the brand is not registered

A business with goodwill in an unregistered name, logo or get-up may still sue for passing off where a competitor's misrepresentation causes, or is likely to cause, damage to that goodwill. The Trademarks Act preserves rights under the law of passing off: for example, the Registrar must refuse to register a mark whose use would be prevented by that law (section 24(4)). Evidence of reputation, such as sales, advertising and customer confusion, is central. See passing off for unregistered brands.

Counterfeits: civil, criminal and border routes

Counterfeiting a registered trademark and selling goods with a falsely applied mark are offences (sections 99 to 102), investigated by the enforcement officers of the Ministry of Domestic Trade and Cost of Living (KPDN). A registered owner can also apply to the Registrar so that expected imports of infringing goods are detained at the border (section 82 onwards). These routes can run alongside a civil action. See counterfeits on online marketplaces and border measures.

Challenging or defending a registration

The court can revoke a registration that has not been put to genuine use in Malaysia for three years without proper reason (section 46), and can declare a registration invalid where it was registered in breach of the grounds for refusal, including where there is an earlier trademark or earlier right (section 47). Well-known trademarks have their own protection, whether or not they are registered here (section 76). See revocation for non-use and bad-faith registrations.

Copyright infringement

Copyright arises automatically in qualifying works, such as photographs, written content, designs and software. Copying or dealing with a work without the owner's licence can be infringement (Copyright Act 1987, section 36), and the owner can sue for an injunction, damages or an account of profits (section 37). The Act also sets out a notice process for content held by online service providers (sections 43H and 43I), and fair dealing exceptions, for example for research, criticism, review or news reporting (section 13(2)(a)). See copyright infringement claims.

Urgent relief

Where infringement is continuing, the court can grant an interim injunction before trial (Specific Relief Act 1950, section 51; Rules of Court 2012, Order 29). Applications must be made promptly and with full disclosure, and the applicant usually gives an undertaking to pay damages if the injunction later proves wrong. See urgent injunctions against infringers.

If you are accused of infringement

A letter of demand alleging infringement should be answered carefully and on time. Unjustified threats of trademark infringement proceedings can themselves give the recipient a claim (Trademarks Act 2019, section 61). See answering an infringement letter.

What to prepare

Registration certificates, or proof of first use and reputation for an unregistered brand.
Screenshots and test purchases of the infringing goods or content, with dates and URLs.
Sales figures, advertising, and any evidence of customer confusion.
Any letters exchanged with the other side.

Legislation and official sources

Trademarks Act 2019 (Act 815) and Copyright Act 1987 (Act 332), Laws of Malaysia, Attorney General's Chambers (lom.agc.gov.my); Specific Relief Act 1950 (Act 137); Rules of Court 2012; Intellectual Property Corporation of Malaysia (MyIPO); Ministry of Domestic Trade and Cost of Living (KPDN). General information only, not legal advice.

FAQ

Can I sue if my trademark is not registered?

You cannot sue for infringement under the Trademarks Act without a registration, but you may have a claim in passing off if you can show goodwill, misrepresentation and damage.

What can the court order against an infringer?

Depending on the case: an injunction, damages or an account of profits, erasure of the offending sign, and delivery up or disposal of infringing goods.

Do you register trademarks?

No. We handle disputes only: infringement and passing-off claims, counterfeit enforcement, revocation and invalidation proceedings, copyright claims, and defending infringement allegations.

How quickly should I act?

Promptly. Delay can weaken an application for an urgent injunction and allows more infringing goods or content to circulate.

Can a registration be cancelled for non-use?

Yes. The court can revoke a registration that has not been genuinely used in Malaysia for three years without proper reason, on the application of an aggrieved person.

Someone is using a brand name similar to my registered trademark. Is that infringement?

A registered trademark is infringed when someone, in the course of trade and without consent, uses an identical sign for identical goods or services, or an identical or similar sign for similar goods or services in a way likely to confuse the public (Trademarks Act 2019, s.54). Collect evidence of the use and any confusion, check your registration covers the goods, and act promptly.

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

Yes, possibly. Passing off protects the goodwill in an unregistered name, logo or get-up. You must usually show goodwill among Malaysian customers, a misrepresentation by the other trader that is likely to mislead them, and damage or likely damage. The Trademarks Act 2019 preserves passing-off rights. Collect evidence of sales, advertising and confusion, and act promptly.

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

Do not ignore the letter, and do not sign undertakings in a hurry. Check whether the sender's mark is registered and for what goods, compare the marks and how you use yours, and look at exceptions such as good-faith use of your own name. Unjustified threats of trademark infringement proceedings can give you a claim under section 61 of the Trademarks Act 2019. Reply in writing before the deadline.

Fake goods under my brand are sold on Shopee or Lazada. What civil action can I take?

Capture evidence and make test purchases, report the listings through the platform, and identify the sellers. A registered owner can sue for infringement (Trademarks Act 2019, s.56). Where a counterfeit mark is involved, the court can order seizure of suspected goods on an interim application, and the owner can elect damages with profits, an account of profits, or additional damages (s.56(4) and (7)). Delivery up and disposal orders are also available.

How do I make a counterfeit complaint for criminal enforcement in Malaysia?

Counterfeiting a trademark and selling or importing goods with a falsely applied trademark are offences under the Trademarks Act 2019 (ss.99 to 102). A registered owner can complain to the Assistant Controller (s.112), and enforcement officers have powers to enter premises, seize goods and arrest (ss.119 to 121). Bring proof of registration, evidence of the fakes and a product comparison. A prosecution punishes the offender but does not by itself compensate you, so a civil claim may also be needed.

Can I stop counterfeit goods at the Malaysian border before they enter the market?

A registered proprietor (or an authorised licensee) can apply to the Registrar to object to an expected import of infringing goods (Trademarks Act 2019, s.82). If approved, the approval lasts 60 days, security must be deposited (s.83), and authorised officers can seize the identified goods. You must then start an infringement action within the period in the notice, or the goods are released and you may face a compensation claim (ss.85, 88 and 89). Officers may also act on their own initiative (s.93).

Can I cancel a competitor's trademark that they never use?

Yes, an aggrieved person can apply to court to revoke a registration that has not been used in good faith in Malaysia for three years after the notification of registration, or whose use has been suspended for an uninterrupted three years, without proper reasons (Trademarks Act 2019, s.46). Use resumed in the three months before the application is ignored unless preparations began earlier. Revocation can be partial, and other grounds include the mark becoming a common name or misleading the public.

Someone registered my brand as their trademark first. Can I get it cancelled?

Possibly. An aggrieved person can apply to court to declare a registration invalid where there was an earlier trademark or an earlier right, such as goodwill protected by passing off (Trademarks Act 2019, s.47(3) with s.24), or where the registration was obtained by fraud or misrepresentation (s.47(6)). Owners of well-known marks have further rights under s.76. An invalid registration is treated as never made, though past and closed transactions are not affected.

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

Yes, to a degree. A well-known trademark is protected whether or not it is registered in Malaysia and whether or not the owner trades or has goodwill here (Trademarks Act 2019, s.76(1)). The owner can seek an injunction against confusing use on similar goods, and against use on any goods that suggests a connection and damages its interests (s.76(2)). It can also seek invalidation of conflicting registrations. Rights may be lost by five years' knowing acquiescence, unless the other use was in bad faith.

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