Groundless Threats of Trademark Infringement Proceedings in Malaysia: What Businesses Should Know

A trademark demand can create immediate pressure. The letter may threaten an injunction, damages, delivery up of stock, a report to a marketplace or an urgent deadline for undertakings. A distributor may start asking questions. A campaign may be due to launch next week.

That pressure is real. It does not prove that the threat is legally well founded.

A business that receives an aggressive allegation should take it seriously, preserve the documents and avoid impulsive admissions. But it should also examine what has actually been threatened, which trademark right is relied on, and whether the claimant’s allegation matches the company’s real conduct. In Malaysia, the Trademarks Act 2019 includes a remedy for certain groundless threats of trademark infringement proceedings. It is useful protection — but it is not a shortcut to dismissing a claim or retaliating against the other side.

What does a threat look like in practice?

A threat is not limited to a document headed “letter before action.”

It may appear in an email demanding that your company cease use of a name, a letter requiring undertakings and a stock recall, a message to a marketplace, or an accusation that litigation will follow unless your company pays or signs immediately. It may refer to an injunction, damages, an account of profits, destruction of goods or costs.

The precise wording matters. A bare statement that a mark is registered is treated differently from a statement that proceedings will be issued against your company. Under section 61(5) of the Trademarks Act 2019, mere notification that a trademark is registered, or that an application has been made, is not by itself a threat of proceedings for the statutory groundless-threats remedy. Trademarks Act 2019 (Act 815)

Save the complete communication. Preserve attachments, screenshots, headers and the date received. A paraphrase made in an internal WhatsApp group may omit the very language that determines the issue.

A firm allegation is not the same as a strong case

The claimant may have a registration. That is important. It is not the end of the analysis.

For an infringement claim under section 54, the registered proprietor must establish the statutory elements relevant to the claim. The analysis can involve the registered mark, the sign your company uses, whether the use is in the course of trade, the goods or services, consent and, in the similarity route, likelihood of confusion. The Act requires the decision-maker to consider all relevant factors when determining likely public confusion. Trademarks Act 2019 (Act 815)

A threat becomes commercially dangerous long before the legal case is resolved. That is why the business should not make two opposite mistakes:

• ignore the claim because it sounds exaggerated; or

• give undertakings because the letter sounds authoritative.

The first response should be an evidence-led assessment.

Check the right that is being asserted

Start with the register.

Identify the registered proprietor, registration number, mark as registered, relevant classes, goods or services, registration date, current status and any apparent assignment or licence history. Compare those facts against the claimant’s description of its rights.

A company may be accused of using a particular word across its entire business, while the registration on which the claimant relies may relate to a particular stylised device or specific goods and services. The claimant may have other rights or arguments; it may not. The point is to test the actual case, not a broad assumption about what registration means.

If the threatened claim concerns an overseas mark, a Malaysian registration, a well-known-mark argument or multiple jurisdictions, identify that clearly at the outset. Territorial questions should not be blurred into a generic demand to “stop worldwide.”

Compare the threat with what your company is actually doing

The complaint should be mapped against real use.

Which sign is in issue? Is it a product brand, trading name, domain, social-media account, keyword, label, advertisement or a reference to compatibility? Which goods or services are involved? Where and to whom is it used?

Preserve the evidence before changes are made:

• packaging, product photos and labels;

• full website and marketplace pages;

• advertisements and social posts;

• brochures, proposals and invoices;

• product descriptions and price lists;

• sales-channel and distributor information; and

• internal records showing when and why the brand was adopted.

A threat can be overbroad in practical terms even if there is some genuine issue to resolve. For example, it may attack all uses of a word when only one product line, one logo variation or one listing is truly in dispute. That difference can matter to the scope of any response or negotiated solution.

What section 61 actually does

Section 61 allows an aggrieved person to bring proceedings for relief where another person threatens infringement proceedings in relation to a registered trademark, subject to important statutory limits. Trademarks Act 2019 (Act 815)

The available relief may include:

• a declaration that the threats are unjustifiable;

• an injunction against continuing the threats; and

• damages for loss caused by the threats.

But the provision does not apply to every kind of threatened act. Section 61(1) excludes threats concerning the application of a mark to goods or packaging material, importation of goods bearing the mark or packaging bearing it, and the supply of services under the trademark. The detail matters. A business cannot sensibly classify a letter as “groundless threats” without first identifying exactly what acts the claimant has threatened to pursue.

There is another important burden point. Under section 61(3), the person making the threat can defeat the claim by showing that the threatened acts constitute, or if done would constitute, infringement of the registered trademark. Even then, the claimant in the groundless-threats action may be entitled to relief if it shows that the registration is invalid or liable to be revoked in the relevant respect under section 61(4). Trademarks Act 2019 (Act 815)

There is a further statutory limit that matters when the demand was sent through solicitors. Section 61(6) provides that an advocate and solicitor is not liable to an action under section 61 for an act done in a professional capacity on behalf of a client. The groundless-threats analysis therefore needs to distinguish the client whose rights are being asserted from the solicitor communicating those instructions.

This is why “their letter is aggressive” is not a legal conclusion. The statutory remedy has a structure. It must be matched to the facts, the threatened conduct, the party legally responsible for the threat and the register.

Possible weaknesses in the underlying claim

A demand that appears excessive may rest on a claim that still needs serious investigation.

Depending on the facts, counsel may need to examine whether the alleged use is non-infringing, whether there is genuine scope for confusion, prior and continuous use, consent or a licence history, good-faith or descriptive use, or validity and revocation issues. None of these should be asserted casually.

Take prior use. It is not enough for a founder to say, “We had the idea first.” The relevant chronology needs contemporaneous proof: dated invoices, archived webpages, printer orders, design records, distributor emails, product launches and sales evidence.

Take consent. A previous distribution relationship may explain why the business used the brand, but an agreement may limit the territory, product line, entity or duration. Find the documents before taking a position.

The purpose of the assessment is not to find a slogan. It is to determine which facts support a response that can be maintained if the claimant escalates.

A weak threat can still damage the business

The legal question is whether the threat and its underlying claim are justified. The commercial question is what the threat is already doing to the business.

A marketplace suspension can interrupt sales even without a court finding. A distributor may pause orders. A product launch can become expensive. Stock, labels, packaging, web development and customer communications may all be affected.

Document those consequences carefully. Keep evidence of lost orders, takedown notices, customer queries, campaign cancellations, relabelling costs and time-sensitive commitments. If a groundless-threats remedy is later relevant, evidence of loss will matter. Even where no such claim is pursued, these facts help management decide how urgently it needs a response, an interim arrangement or a commercial resolution.

Do not retaliate by calling the claimant unlawful

It can be tempting to answer an aggressive letter with an accusation that the claimant is making unlawful threats, abusing its rights or acting in bad faith. That can be strategically damaging.

The company may have misunderstood the registration, the claimant may hold additional rights, or the threat may fall outside the scope of section 61. An unnecessarily hostile response can also make a commercial solution harder.

A better approach is disciplined: preserve the evidence, verify the rights, identify the alleged conduct, ask for particulars where they are missing, reserve the company’s position and respond to what can actually be established. If a section 61 issue may arise, let it be developed on a proper legal and evidential basis — which is how our trademark litigation defence service approaches it.

Practical response options

Where the threat appears weak, unclear or disproportionate, the appropriate response may include asking the claimant to identify its registration and complaint precisely, denying the allegation with reasons, reserving the company’s rights, proposing a limited operational solution, or preparing for litigation.

The best option depends on urgency. A company facing a prospective injunction, a major marketplace takedown or a launch deadline may need legal counsel to take over the correspondence quickly. So may a business that has received repeated threats, inconsistent allegations or demands for broad undertakings.

The first reply does not have to decide the whole dispute. But it should avoid accidental admissions, preserve room to investigate and make clear that the business will not give away valuable rights merely to meet an artificial deadline.

Frequently asked questions

Does every aggressive demand letter count as a groundless threat?

No. Section 61(1) excludes threats about applying the mark to goods or packaging, importing goods bearing the mark, and supplying services under the mark. What was actually threatened has to be identified first.

Can we sue the other side's law firm?

Section 61(6) provides that an advocate and solicitor is not liable under section 61 for an act done in a professional capacity on behalf of a client. The analysis focuses on the client asserting the rights.

Is simply being told a mark is registered a threat?

Not by itself. Under section 61(5), mere notification that a trademark is registered, or that an application has been made, is not a threat of proceedings for this purpose.

Which route fits your situation

Get legal help early where the demand mentions proceedings, injunctions, delivery up, damages, undertakings, platform takedowns or a deadline that could materially affect the business. That is particularly important before a director signs an undertaking or the company changes a valuable brand.

If your business has received a threat of trademark infringement proceedings and you are unsure how strong the claimant’s position is, our trademark litigation defence service can assess the threat, the underlying rights and your defence options before your company responds or gives any undertaking.

This article provides general information on Malaysian trademark disputes as verified on 16 August 2026. It is not legal advice and does not create a solicitor-client relationship. The appropriate response depends on the exact threat, the evidence and the applicable law.

Related guides

• How to respond to a trademark infringement allegation

• The defences available in a trademark infringement claim

• How defence counsel challenges a trademark claim

• Sue, settle or walk away: making the commercial call