What Should You Ask a Trademark Litigation Lawyer Before Appointing Them?

Choosing trademark litigation counsel is not about finding someone who can repeat that trademarks should be protected.

Your business needs advice that helps it make a decision under pressure. Perhaps you have received a demand. Perhaps an online platform has removed a listing. Perhaps court papers have arrived. Or perhaps a product launch is at risk.

The first discussion should tell you whether the lawyer understands the actual dispute, the evidence still needed, the commercial exposure and the decisions that cannot wait. These questions will help you test that.

Start with the problem you need the lawyer to solve

Begin by describing the outcome your business needs.

Do you need to respond to a demand without making admissions? Resist an injunction? Keep a product launch moving? Protect a long-established brand? Find a commercial settlement? Defend court proceedings? The same legal allegation can require very different work depending on the business objective.

A useful lawyer will not force every problem into the same template. They should ask what is at stake: the sales channel, stock, campaign, distributor relationship, revenue, customer commitments and the value of the branding to the company.

That does not mean the answer must be immediate. It means the right questions are being asked from the start.

Ask: What does the claimant actually have to prove?

This is one of the most revealing questions.

A good answer should identify the claimant’s asserted rights, the sign your company is said to be using, the relevant goods or services, the commercial context and the facts that could matter to the alleged infringement. It should not simply say, “They have a registration, so it is serious,” or “The logos are different, so you are safe.”

Under the Trademarks Act 2019, infringement depends on defined statutory circumstances. The claimant’s registration is important, but the case still needs to be matched to the actual use and evidence. Trademarks Act 2019 (Act 815)

Listen for a lawyer who can explain the pressure points plainly and distinguish what is known from what still needs investigation.

Ask: What are the strongest potential defences on the facts you have seen?

The wording matters: on the facts you have seen.

A responsible lawyer should not promise a defence before examining the documents. But they should be able to identify the possible areas for analysis: ownership and scope of the claimant’s right, similarity and actual use, goods or services, prior and continuous use, consent or licence history, factual distinctions, validity or revocation issues and gaps in the evidence.

The answer should also include what might weaken the company’s position. A lawyer who identifies only favourable facts is giving you reassurance, not an assessment.

A useful follow-up is: “What documents would change your view?” That reveals whether the lawyer is testing the case or simply taking the company’s first account at face value.

Ask: What is the immediate procedural or commercial risk?

The first danger is not always legal liability at trial.

It may be an urgent injunction application, a deadline for undertakings, a marketplace takedown, a distributor pause, stock that cannot move or a campaign that is about to launch. If court papers have been served, the form of the proceedings and stated deadlines require immediate attention.

Ask the lawyer to separate:

• what must happen now;

• what can wait until the evidence is clearer; and

• what commercial action should be considered while the legal position is being assessed.

That answer should be specific. “Be careful” is not a plan.

Ask: What evidence is missing, and how important is it?

Trademark disputes are frequently won or lost in the chronology and source documents.

Ask what the lawyer needs to see: original correspondence, registration details, packaging, product images, websites, advertisements, invoices, design files, sales information, agreements, licence records, distributor communications and prior-use evidence.

Then ask what is missing. Perhaps the company knows it used a name early but cannot yet locate dated proof. Perhaps a former distributor has relevant records. Perhaps the claimant’s letter omits the full registration. Perhaps a marketing change created a new risk. These gaps do not necessarily defeat the case, but they can affect strategy.

A lawyer should tell you which missing documents are critical and which are useful but not urgent.

Ask: What should we avoid doing now?

This question can prevent avoidable damage.

The usual cautions may include making informal admissions, signing broad undertakings, responding through multiple team members, deleting webpages or records, changing branding without preserving evidence, contacting the claimant’s customers, or missing a response or court date.

But the advice should be tailored. A company may need to pause a campaign or adjust a listing for commercial reasons. That may be sensible. The important point is to preserve the original evidence and understand what the change communicates.

You are looking for a lawyer who protects the company’s position while recognising that the business may still need to operate tomorrow.

Ask: What are the realistic strategic options?

A good lawyer should be able to map the options without pretending they are all equally attractive.

The company might defend fully, seek clarification, narrow the dispute, make a controlled operational adjustment, negotiate coexistence, settle, challenge the claimant’s asserted right or prepare for litigation. The appropriate route depends on legal merit, evidence, cost, urgency and business exposure.

Ask: “What would each option achieve, and what does it cost us in money, time, brand value and management attention?” That turns a legal discussion into a business decision.

Ask: What would make you recommend settlement rather than litigation?

Settlement should not be treated as surrender. Litigation should not be treated as courage.

Ask the lawyer what facts would make a negotiated outcome commercially sensible. It may be a significant injunction risk, limited value in the disputed brand, a manageable rebrand, a weak evidential record, a time-sensitive launch or a settlement proposal that creates a workable future.

Then ask what terms would need particular care: undertakings, stock sell-off, territories, product categories, online listings, affiliates, confidentiality, releases or payment.

A good lawyer will help you negotiate from an informed position, not push settlement merely to make a file disappear.

Ask: What would make you recommend fighting the claim?

The reverse question is just as important.

A lawyer should explain what might justify a firm defence: a weak or overbroad claim, reliable prior-use evidence, a key commercial distinction, serious overreach in the remedy demanded, a strategic brand worth protecting or settlement terms that would harm the business more than the dispute.

The answer need not be certain. It should show commercial judgment, not an appetite for litigation as an end in itself.

Ask: How will the matter be staged, and what decisions will we need to make?

Complex disputes should be broken into decision points.

The early stages may include an initial assessment, evidence collection and correspondence. Later work may involve an injunction response, pleadings, affidavits, document production, negotiation, witnesses and trial preparation. Not every matter needs every stage.

Ask what the first stage will deliver, what decision you will need to make next, and what could expand the scope. This lets management retain control over the work rather than receiving a single undifferentiated legal process. Our trademark litigation defence service is structured that way for exactly this reason.

Ask: How will fees and disbursements be managed?

You should expect transparency about scope and assumptions, not a fictional fixed all-in price for an uncertain dispute.

Ask what the initial stage covers, what may cause fees to change, what disbursements may arise, when cost estimates will be reviewed and how the work can be prioritised. Provide an organised evidence pack and identify the commercial objective; both can make legal work more efficient.

The cheapest opening response can be expensive if it makes an unnecessary admission or gives away a valuable right. Cost should be judged against the business exposure.

Ask: Who will handle the matter, and how will communication work?

Find out who will be responsible for the strategy, drafting, court work and day-to-day communication. Ask how urgent communications are handled and what the lawyer needs from your team to move efficiently.

A trademark dispute often requires input from management, marketing, product, finance and operations. The communication structure should make it easier — not harder — for the company to give clear instructions and make timely decisions.

Ask: What is your proposed first step if we appoint you?

The answer should be specific to the dispute.

It might be to obtain the registration documents, preserve evidence, prepare a chronology, request particulars, respond to an undertaking demand, assess injunction risk or review served papers. A vague answer is a warning sign. A clear, proportionate first step shows that the lawyer understands where the business is.

Frequently asked questions

Should we appoint the lawyer who registered our trademark?

Not automatically. Registration work and contentious defence work are different disciplines. Ask specifically about defendant-side experience, injunction response and court conduct.

Is it a bad sign if the lawyer will not predict the outcome?

No — the opposite. A lawyer who guarantees a result before reading the documents is not assessing the case. What you want is a clear view of the pressure points and what evidence would change the picture.

How quickly do we need to appoint someone?

Immediately if court papers have been served, an injunction is threatened or a platform takedown is affecting sales. Otherwise, early enough that the first response is written to a strategy rather than to a deadline.

What a good first discussion should leave you with

By the end, you should have a clearer view of:

• the claimant’s likely case and its pressure points;

• what is urgent;

• the evidence you need to preserve or find;

• the realistic strategic options;

• the next decision point; and

• the work needed to get there.

If your business is deciding whether to appoint counsel for a trademark infringement claim, tell us what has happened and identify the key correspondence or court documents so we can understand the issue you need help with under our trademark litigation defence service.

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

Related guides

• What trademark infringement defence work actually costs

• How defence counsel challenges a trademark claim

• How to prepare a trademark infringement evidence pack

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