How to Respond to a Trademark Infringement Allegation in Malaysia

A trademark infringement allegation can arrive in several forms. It may be a formal letter from a law firm. An email from a competitor. A complaint sent to an online marketplace. A demand that your company remove products, change its name or stop an advertising campaign. Sometimes the sender gives you seven days to comply. Sometimes less.

The allegation may look conclusive. A trademark registration number is quoted. Your logo appears beside the claimant’s. The letter says your company is infringing its rights and demands immediate action.

That does not mean the claim should be ignored. It also does not mean every demand should immediately be accepted.

Under Malaysia’s Trademarks Act 2019, registration gives the proprietor important exclusive rights, but an infringement analysis still depends on matters such as the trademark actually registered, the goods or services covered, the sign your business is using, how it is being used, and — in relevant cases — whether that use creates a likelihood of confusion. The Act also identifies circumstances in which use does not amount to infringement. Trademarks Act 2019 (Act 815)

The first task, therefore, is not to decide whether to fight. It is to understand exactly what you are being accused of, what can be proved, what is commercially at risk and what position your company should take before it says something that may be difficult to withdraw later.

Start with the allegation itself: what exactly are you accused of doing?

“Trademark infringement” is a conclusion. You first need the facts underneath it.

Suppose a competitor alleges that the name of one of your software products infringes its registered trademark. Before asking whether the competitor is right, isolate the conduct it is actually complaining about. Is the allegation directed at:

• your company name;

• a product or service name;

• a logo;

• packaging;

• a domain name;

• an online marketplace listing;

• social-media advertising;

• the wording of a campaign;

• an imported product;

• or several of these at once?

Then identify the products or services involved, the relevant sales channels and the period during which the allegedly infringing use occurred.

This matters because Malaysian trademark law does not treat “similar branding” as a free-standing legal wrong. Section 54 of the Trademarks Act 2019 addresses particular forms of use in the course of trade. It covers, among other things, applying a sign to goods or packaging, offering goods for sale, putting goods on the market, supplying services under the sign, importing or exporting goods, using the sign on commercial documents and using it in advertising. Trademarks Act 2019 (Act 815)

So narrow the allegation. What sign? Used where? On what goods or services? Since when? Until those questions are clear, it is difficult to assess the claim intelligently.

Separate what the claimant says from what the claimant has proved

A strongly worded allegation can create a false sense that the legal analysis has already been completed. Often it has not.

Make two columns. In the first, record what the claimant alleges. In the second, record the evidence actually supplied for each allegation. Has the claimant provided its registration number, the registered representation of the mark, the proprietor’s details, the goods or services for which it is registered, examples of your allegedly infringing use, evidence of actual confusion, evidence of when it began using its mark, or evidence supporting any allegation of loss?

Some of those matters may eventually be unnecessary to establish a particular cause of action. Others may become important depending on the infringement case being advanced.

The point at this stage is simpler. An assertion is not evidence merely because it appears in a lawyer’s letter. The reverse is also true: a thinly documented demand should not automatically be dismissed as weak. The claimant may possess evidence it has not yet disclosed. Your company needs to know the difference.

Check the trademark rights actually being relied upon

A registration number should be investigated, not merely copied into your response.

Under section 48 of the Trademarks Act 2019, the registered proprietor has exclusive rights to use the registered trademark, and to authorise others to use it, in relation to the goods or services for which the trademark is registered. Those rights are also subject to any applicable disclaimers, conditions, amendments, modifications or limitations. Trademarks Act 2019 (Act 815)

That creates several immediate questions. Who is the registered proprietor? What exactly does the registered mark look or sound like? When was it registered? What goods or services does the registration cover? Are there limitations or disclaimers? Is the claimant itself the proprietor, or does it rely on another legal relationship with the proprietor?

There is an important commercial reason for doing this before responding. A company may receive a demand based on a registration that is broader, narrower or simply different from what the letter’s language suggests. Do not assess the claim by comparing two logos in an email. Assess the legal right that actually exists.

Do not assume visual similarity decides the case

Some infringement allegations are comparatively direct. Section 54(1) provides for infringement where an identical sign is used, without consent, in relation to goods or services identical to those for which the trademark is registered.

Other cases require more analysis. Where an identical sign is used for similar goods or services, or a similar sign is used for identical or similar goods or services, section 54(2) requires a resulting likelihood of confusion on the part of the public. Trademarks Act 2019 (Act 815)

That distinction matters. Consider two businesses using names that share one prominent word. A side-by-side comparison might make the names look close. But the legal analysis may need to consider the marks as registered and used, the goods or services involved and the circumstances relevant to whether the statutory requirements are met.

This is why a response saying simply, “Our logos are different, therefore there is no infringement,” can be risky. So can the opposite response: “Our logos are similar, so we accept your claim.” Both may jump several steps ahead of the real analysis.

Build your own chronology before changing the branding

One date can alter the shape of a trademark dispute.

When did your company first adopt the sign? When was it first used commercially? Has it been used continuously? Did the branding change over time? Who created or proposed it? Was it inherited from an earlier business? Did the claimant know about the use? Was there ever a distribution, licensing, collaboration, franchise, reseller or other commercial relationship between the parties?

These questions are not administrative housekeeping. Section 55 contains a prior-use provision under which, in specified circumstances, continuous use of an unregistered trademark from before the relevant earlier date does not infringe the later registered trademark. The statutory test is specific, so simply saying “we used it first” is not enough. But the history may be legally significant. Trademarks Act 2019 (Act 815)

Historical evidence can also disappear surprisingly quickly. Websites are redesigned. Staff leave. Packaging changes. Advertising accounts are closed. Marketplace listings are overwritten. Reconstruct the history while it is still available.

Preserve the evidence before anyone starts “fixing” the problem

When a complaint arrives, a natural reaction is to remove the disputed material. Sometimes that may ultimately be sensible. But first preserve what existed.

Take dated screenshots of relevant webpages and online listings. Retain samples or photographs of packaging. Preserve advertisements, catalogues and campaign material. Keep invoices showing when products were sold. Save correspondence explaining how the brand was selected. Locate agreements with designers, distributors, licensors or commercial partners.

Why preserve evidence of something you may later stop doing? Because once the dispute develops, the question may not merely be what your company is doing today. It may be what it did months or years ago, when that conduct began, what the other party knew and what can actually be established from contemporaneous records.

Do not destroy or alter relevant documents because a claim has arrived. Preserve first. Then decide what should change.

Check whether the Act identifies a potentially relevant non-infringing use

Receiving an infringement allegation does not mean that every use of another party’s registered trademark necessarily infringes.

Section 55 of the Trademarks Act 2019 identifies several circumstances in which use does not amount to infringement. These include, subject to the statutory requirements, good-faith use of a person’s name or place of business; good-faith descriptive use concerning matters such as the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of goods or services; and certain use indicating the intended purpose of goods, accessories, spare parts or services in accordance with honest commercial practices. The Act also deals with matters such as qualifying continuous prior use, consent and use of another registered trademark in relation to the goods or services for which that latter mark is registered. Trademarks Act 2019 (Act 815)

These are not phrases to copy into a response letter and hope one applies. Each has conditions.

The better approach is to identify which factual or legal issues genuinely arise from your company’s conduct and investigate those properly. A spare-parts seller referring to the brand of equipment with which a component is compatible presents a different problem from a new entrant adopting a similar mark as the badge of origin for its own competing product. The details matter.

Ask whether consent, permission or the parties’ history changes the picture

Some disputes begin after a commercial relationship breaks down. A former distributor continues using a brand after termination. A joint venture ends. A manufacturer says permission was limited to particular products. A company that previously tolerated another business’s use suddenly demands that it stop.

In those situations, the trademark registration may be only part of the story. You may need to review licence terms, distribution agreements, reseller arrangements, email approvals, brand guidelines, termination provisions, amendments and historical conduct between the parties.

Section 55 expressly recognises that use which has been expressly or impliedly consented to by the registered proprietor or licensee does not infringe under the provision. Whether consent existed, what it covered and whether it continues are factual and contractual questions that may require careful analysis.

This is where a trademark dispute can become a contract dispute at the same time. Do not examine one document in isolation if the commercial relationship has a history.

Work out what is actually at risk

The legal question is whether the claimant can establish infringement. The commercial question is what happens to your business while that question is being resolved. They are related. They are not identical.

A disputed sign might appear on one low-volume product that could be changed relatively easily. Or it may sit at the centre of the company: website, packaging, signage, distributor arrangements, stock, marketing campaigns, customer contracts, app-store listings, domain names, export channels. The commercial exposure is very different.

Under section 56 of the Trademarks Act 2019, a registered proprietor may institute infringement proceedings, and the Court may grant relief including an injunction, damages and an account of profits. The Act also contains further provisions dealing with infringing goods and offending signs. An injunction can be particularly important commercially because the dispute may affect what the business is permitted to do while the underlying issues are being litigated. Trademarks Act 2019 (Act 815)

So quantify the problem early. What percentage of revenue is attached to the disputed brand? How much stock carries it? How long would replacement packaging take? Are customer or distributor commitments affected? Could an online platform suspend listings? What is the realistic cost of changing the sign compared with defending it? Could a limited interim change protect revenue without conceding the entire claim?

Not every legally arguable position is commercially worth fighting to judgment. And not every expensive rebrand is commercially sensible merely because the claimant has demanded one.

Decide what you want the first response to achieve

This is one of the most important steps. Do it before drafting.

Businesses often approach the response as though there are only two choices: deny everything, or comply. There are more. Depending on the facts, the first response may be intended to:

• reject the allegation;

• request proper particulars;

• challenge part of the claim;

• reserve the company’s position while investigations continue;

• explain a factual distinction;

• identify a relevant permission or prior relationship;

• obtain additional time;

• narrow the products or conduct in dispute;

• propose a temporary arrangement;

• open settlement discussions;

• give a limited undertaking; or

• prepare the record for litigation.

A response written before that objective is decided often wanders. Setting that objective first is where our trademark litigation defence work starts. It may deny points that do not matter, volunteer facts nobody asked for and make concessions on the issues that do. A good response strategy starts with a question: what position do we want the company to be in after the other side reads this? Only then should the words be drafted.

Be careful about what the company admits

A hurried email can create unnecessary problems. Someone in marketing may write: “We did take inspiration from your brand, but we thought it would be okay.” A commercial director may say: “We are willing to change immediately.” A junior employee may answer a marketplace complaint without understanding that the same factual statement could later appear in correspondence between solicitors.

The problem is not that companies should never communicate. It is that the response should be consistent with the position the company has actually investigated and intends to maintain.

Before a substantive reply is sent, consider whether it makes unnecessary admissions about similarity, copying, awareness of the claimant’s mark, dates of use, ownership, consent, customer confusion, sales volumes, profits, willingness to stop or willingness to destroy stock.

Do not manufacture arguments either. An unsupported assertion that the claimant’s registration is “invalid” can damage credibility just as readily as an unnecessary admission of infringement. Precision matters more than aggression.

A short deadline does not eliminate the need for analysis

Demand letters often impose deadlines. Some are commercially or procedurally important. Others are deadlines chosen by the sender. Neither should simply be ignored.

But a short deadline does not mean the company must reach a final view on a complex rights history overnight. Where appropriate, the response may first need to acknowledge the correspondence, preserve the company’s position, seek further information or request a reasonable period for investigation.

The appropriate approach depends heavily on what has been threatened. There is a considerable difference between “please respond within seven days” and “we will apply for urgent injunctive relief if the conduct continues.” Where court proceedings have already been filed, or an urgent injunction is threatened, the matter has moved beyond ordinary correspondence.

Should the business stop using the mark while the dispute is assessed?

There is no universal answer.

Stopping immediately may reduce continuing exposure and commercial escalation. It may also disrupt the business, weaken negotiating leverage or create a rebranding cost that later proves unnecessary. Continuing without assessment may preserve operations. It may also increase the commercial consequences if infringement is ultimately established.

The decision should therefore be based on risk rather than reflex. Consider the apparent strength of the claim, the importance of the disputed branding, whether a temporary modification is practical, the possibility of urgent court action, the amount of continuing sales, inventory already in the market, commitments to distributors and customers, rebranding lead times and reputational consequences.

Sometimes the best interim solution is neither “continue exactly as before” nor “abandon the brand permanently.” A temporary measure may preserve the company’s position while reducing immediate disruption. But any interim arrangement should be considered carefully, particularly if the other side wants it documented as an undertaking.

Understand the difference between a commercial compromise and a legal concession

A company may decide to change a particular advertisement even though it disputes liability. It may agree not to launch one product pending discussion. It may remove one marketplace listing while maintaining that its broader brand use is lawful.

Commercial compromise can be useful. But document it carefully. The question is whether the company is making a temporary business decision or accepting the legal proposition advanced by the claimant. Those are not necessarily the same thing.

When negotiations are rushed, the distinction can disappear. A sentence intended to calm the dispute may later be characterised as an admission. An informal promise may become the starting point for a much broader undertaking. Know what is being conceded. Know what is not.

Consider what the claimant is likely to do next

A useful response strategy anticipates the next move.

If you deny the claim, will the claimant ask for more information? If you request particulars, what documents are you expecting? If you propose coexistence, which products, markets or channels need to be defined? If the claimant insists on undertakings, what would compliance require operationally? If proceedings are commenced, is the evidence already organised?

Many disputes develop through further correspondence, clarification, negotiation or settlement. But the first response should not be written as though nobody will ever read it again. Draft with the next stage in mind.

When should trademark litigation counsel become involved immediately?

Not every brand complaint requires immediate litigation. Some do. Early legal involvement becomes particularly important where:

• court proceedings have already been served;

• an injunction has been threatened;

• the response deadline is unusually short;

• the disputed brand accounts for material revenue;

• substantial stock may become unsaleable;

• marketplace or distribution channels are at risk;

• the parties have a complicated licensing or commercial history;

• earlier use may be important;

• the claimant demands broad undertakings;

• the company is considering challenging the rights relied upon; or

• senior management is contemplating a significant rebrand or settlement payment.

The reason is not simply that “trademark law is complicated.” It is that important decisions become interconnected. The legal position affects the commercial strategy. The commercial strategy affects what should be said. What is said affects negotiation. Negotiation affects litigation risk. By the time proceedings begin, decisions made in the first few days may already have shaped the dispute.

Frequently asked questions

Do we have to reply at all?

There is no legal compulsion to answer a demand letter, but silence has consequences — escalation, platform complaints and an uncontested version of the facts. A holding reply that reserves your position usually costs little and protects more.

Can we say we are willing to change to calm things down?

Be careful. A conciliatory sentence can later be characterised as an admission or become the starting point for a much broader undertaking. Distinguish a temporary commercial step from a legal concession, and document which one you are making.

What if their deadline is unreasonably short?

Acknowledge the correspondence, reserve your position and request a reasonable period to investigate. A deadline set by the sender is not a court deadline — but a threatened injunction changes the urgency entirely.

Which route fits your situation

A trademark infringement allegation deserves a response proportionate to the actual risk. Sometimes the claim is strong. Sometimes important facts are missing. Sometimes your company’s history changes the analysis. Sometimes a legal defence exists but a commercial resolution still makes more sense. The mistake is deciding which of those situations you are in before the work has been done.

Identify the allegation. Check the rights. Reconstruct the history. Preserve the evidence. Assess the legal issues. Quantify the commercial exposure. Then decide what the response is meant to achieve.

If your business has received a trademark infringement allegation and you want the claim, evidence and response strategy assessed before committing the company to a position, our trademark litigation defence service can review the dispute and determine the appropriate next steps.

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 allegation, evidence, procedural position and applicable law.

Related guides

• The risks of ignoring a trademark cease and desist letter

• The defences available in a trademark infringement claim

• How to prepare a trademark infringement evidence pack

• What to do in the first days after your company is sued