Trademark Infringement Defence in Malaysia: How a Lawyer Can Challenge the Claim Against You

When a company receives a trademark infringement allegation, the dispute can begin with a letter. It can also begin after an online listing is removed, a distributor calls, or court papers arrive.

At that point, the business does not only need an answer to the question, “Have we infringed?” It needs a defence strategy: a structured way to test the claimant’s case, preserve the evidence, control immediate disruption and decide which risks are worth fighting, narrowing or settling. That is what changes when defence counsel becomes involved.

What changes once a defence lawyer is involved

Before counsel is instructed, disputes often move on the claimant’s timetable. The company is reacting to a deadline, a demand for undertakings or an alarming reference to injunctions.

A defence lawyer starts by separating the noise from the issues. What is the claimant actually asserting? Which registration is relied on? What use by the company is said to infringe? What evidence exists? What has already been said? Which operational decisions cannot wait?

This is not simply a more formal reply. It is the start of a legal and commercial strategy. The aim is to ensure that the company does not concede valuable rights, make avoidable admissions or incur a preventable rebranding cost before the claim has been properly tested.

Review the claimant’s rights before accepting the premise of the claim

A registered trademark is important. It should be verified, not assumed.

Defence counsel will normally examine the registered proprietor, the mark as registered, the specified goods or services, registration dates, the status of the registration, any assignment or licence history and the exact legal route advanced by the claimant. The letter may make broad statements about “our brand,” while the registered right and alleged conduct are more limited. Registration is prima facie evidence of the matters recorded in the Register under section 52, and after five years the original registration is treated as valid subject to the limited exceptions in section 53. A validity challenge therefore needs to be tested against the actual statutory route rather than treated as a generic fallback defence. Trademarks Act 2019 (Act 815)

Under section 54 of the Trademarks Act 2019, infringement depends on defined statutory circumstances. The similarity-based routes concern use in the course of trade of an identical sign for similar goods or services, or a similar sign for identical or similar goods or services, resulting in a likelihood of confusion on the part of the public. By contrast, use of an identical sign for identical registered goods or services is addressed separately under section 54(1). The claimant’s registration does not remove the need to prove the elements that apply to the route it actually relies on. Trademarks Act 2019 (Act 815)

This review can expose a real weakness. It can also confirm that the claimant’s position is stronger than management expected. Both outcomes are useful before the business chooses its next move.

Analyse the alleged use in its commercial setting

Trademark disputes are rarely decided by placing two logos in a blank document.

Counsel will want to see how the company uses the challenged sign: on what goods or services, in which channels, with what surrounding branding, to which customers and in what territory. The use may be on packaging, a product page, a domain, an app, a marketplace listing, advertising, invoices or commercial documents. Each context can matter.

Consider a B2B technology supplier and a consumer brand using similar words. The marks may appear close in isolation. But their products, buyers, sales journeys, price points and branding may create meaningful distinctions. The reverse is also possible: an apparently small similarity can become much more serious where the parties sell through the same channels to the same customers.

A defence strategy needs evidence, not impressions. Screenshots. Packaging. Product photographs. Sales materials. Website archives. Customer-facing journeys. The real commercial context is where the legal analysis becomes credible.

Build the chronology and evidence record

The strongest explanation is usually supported by contemporaneous documents.

Defence counsel will build a chronology of brand development, first use, launches, changes in branding, sales history, correspondence, licence arrangements and the claimant’s first contact. Documents might include design files, approvals, invoices, packaging orders, webpages, advertisements, distributor records, sales data and relevant emails.

The chronology does more than prove dates. It can show whether the company adopted the mark independently, how the brand has evolved, whether there was a prior commercial relationship and where the factual pressure points lie.

Do not delete or alter material after the allegation arrives. Preserve it. If a webpage needs to come down for commercial reasons, capture it first and record what was changed. The defence should be built on the real history, including inconvenient facts. A polished account that cannot survive document review is worse than a candid assessment early.

Identify and test the defence routes

A defence lawyer does not begin by promising that a defence exists. They identify the possible routes and test them against the facts and the Act.

Depending on the case, this can include factual non-infringement, the scope of the registration, defined good-faith uses, consent or licence history, qualifying earlier and continuous use, the effect of another registered trademark, and — where the statutory basis exists — revocation or invalidation issues. The point is not to collect every imaginable defence. It is to identify which routes are legally available on the facts and worth developing.

Section 55 sets out specific circumstances in which use does not amount to infringement. These include defined good-faith uses under subsection 55(1), qualifying continuous earlier use of an unregistered trademark under subsection 55(2), certain consent and other uses under subsection 55(3), and use of another registered trademark in relation to the goods or services for which that latter mark is registered under subsection 55(4). The conditions matter. An assertion of prior use, for example, needs a proper chronology and evidence of continuous use in the course of trade from before the relevant earlier date, not merely an undated recollection of a name being discussed internally. Trademarks Act 2019 (Act 815)

Where use began through a distribution, franchise, agency or licensing arrangement, the contracts must be read closely. Permission may have been limited by product, territory, duration or entity. Equally, a claimant may be overlooking documents or conduct that affect the scope of its complaint.

The objective is a defence position that can be supported in correspondence, negotiation and, if needed, court.

Assess injunction and operational risk early

The legal case matters. So does the cost of disruption while the case is still unresolved.

Could the business be forced to pause sales, advertising, marketplace listings or use of the disputed branding? What stock is affected? Is a major launch due? Will a distributor or platform act before a court does? Can a temporary solution be implemented without conceding the company’s entire position?

Under section 56, the Court may grant relief in an infringement action, including an injunction on conditions it thinks fit, damages or an account of profits, with additional statutory remedies in defined circumstances. An injunction risk should therefore be assessed before the company treats a deadline as merely a negotiating tactic. Trademarks Act 2019 (Act 815)

The response may need to distinguish the legal exposure from the operational response. A company might defend strongly while making a limited temporary change. Or it may decide that changing one presentation is commercially sensible but reject a demand that reaches far beyond the real issue.

Challenge the remedies and quantum — not only liability

A dispute can be managed badly even when the company focuses correctly on liability.

Claimants may demand undertakings, damages, an account of profits, delivery up, destruction of goods, disclosure of sales information or sweeping promises about future use. These demands should be tested for legal basis, scope and proportionality. Under section 56(6), damages and an account of profits are generally mutually exclusive, subject to the limited statutory treatment in subsection 56(5) and the separate counterfeit-trademark provisions in subsection 56(7). A demand letter should not be treated as though every remedy listed can automatically be recovered together. Trademarks Act 2019 (Act 815)

An undertaking is not just a letter of apology. It may constrain how the company, its affiliates, distributors or future products operate. A broad promise can outlive the immediate dispute.

Defence counsel will assess what the claimant is demanding, what relief it could realistically obtain, what evidence supports any monetary claim and whether a narrower solution can protect the company’s position. The goal is not to deny every remedy reflexively. It is to avoid conceding more than the law and facts require.

Develop the response or pleading strategy

A well-run defence is selective.

Some allegations may need to be denied. Others may need clarification. Some facts may be accepted but given a different significance. A point may be reserved until the evidence is complete. In court, the same discipline applies: what should be admitted, denied, put to proof, challenged or advanced as a responsive claim?

The first response should serve a purpose. It may obtain time to investigate, correct factual errors, force the claimant to identify its actual case, protect the company against a rushed undertaking or open a settlement conversation without weakening the legal position.

This is why generic replies are risky. A defence should be written for the company’s evidence, commercial goal and procedural position. That is the discipline our trademark litigation defence service applies from the first letter onward.

Use commercial leverage intelligently

A legal dispute is not fought in a vacuum.

The company may have stock that cannot be relabelled quickly, an important campaign, contractual delivery commitments, a core customer base or a brand that is central to its valuation. The claimant may face its own uncertainty, delay, costs or reputational reasons to resolve the matter.

Defence counsel helps management use those facts intelligently. The legal question is whether a claim can be defended. The commercial question is what a defence, change, settlement or litigation path will cost the business in revenue, time and attention.

A company with a strong legal position may still choose a controlled rebrand. A company with moderate risk may decide to resist because the brand is strategically essential. Neither decision is automatic. Both should be made with the evidence and consequences visible.

Decide when to negotiate and when to litigate

Settlement is not necessarily a concession. Litigation is not necessarily a show of strength.

Negotiation may be the right answer when it removes disproportionate disruption, gives the company a workable transition or protects a valuable relationship. Litigation may be justified when the claimant’s demand is unsupported, the brand is central to the business or settlement terms would cause greater long-term harm.

The important point is to negotiate from an informed position. Before offering a settlement, management should know its evidence, the claimant’s rights, the possible remedies, the cost of options and its own red lines.

A settlement agreement should also be documented properly. Ambiguity about future use, stock, territories, affiliates or online listings can turn today’s solution into tomorrow’s dispute.

Prepare for interim applications and trial if necessary

If proceedings become likely, the defence work should remain coherent. The documents, chronology, witnesses, affidavits, disclosure strategy and expert issues — if any — should all support the same theory of the case. Court preparation is not the moment to discover that marketing used a different version of the mark, a distributor has relevant documents or a key email was never preserved.

Early defence work reduces these surprises. It also makes it easier to evaluate a settlement offer later, because the company understands the strength and cost of continuing.

Frequently asked questions

Does a registered trademark mean the claimant automatically wins?

No. Registration is important and carries evidential weight under section 52, but the claimant still has to establish the statutory route it relies on under section 54 against your actual use, goods or services and channels.

Can they claim both damages and an account of profits?

Generally not together. Section 56(6) treats damages and an account of profits as mutually exclusive, subject to the limited treatment in subsection 56(5) and the separate counterfeit provisions in subsection 56(7).

Should we just sign the undertakings to end it?

Take advice first. An undertaking can constrain your affiliates, distributors and future products well beyond the conduct actually complained of, and it is far harder to unwind than to negotiate properly at the outset.

Which route fits your situation

Provide the claim documents, registrations, correspondence, chronology, brand-use evidence, product and sales information, relevant contracts, business impact and internal decision points. If court papers have been served or an injunction is threatened, say so immediately — urgency affects the work that must happen first.

If your business is accused of trademark infringement, our trademark litigation defence service can assess the claimant’s case, identify the strongest defence strategy and manage the dispute through negotiation or litigation.

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 defence depends on the facts, evidence and applicable law.

Related guides

• The defences available in a trademark infringement claim

• What to ask a trademark litigation lawyer before appointing them

• What to do immediately when court papers are served

• When a counterclaim is worth bringing