What Defences Are Available in a Trademark Infringement Claim in Malaysia?

A trademark infringement allegation can sound final. The letter identifies a registration number, compares two brands, demands undertakings and gives the business a short deadline.

But a registered trademark does not make every complaint an automatic win.

The claimant still has to establish the legal route it relies on and apply it to the facts: the relevant registration, the sign your company uses, the goods or services, the way customers encounter both brands and the evidence. Your business, in turn, should not assume that a plausible answer to one issue ends the dispute. A defence is a position supported by facts, documents and a sensible strategy.

This article explains the main issues a Malaysian company and its lawyers may investigate when defending a trademark infringement claim. It is not a step-by-step guide to responding to a letter or to managing court deadlines after proceedings begin. Those need their own urgent attention.

Start with the claimant’s actual rights

The first question is not “Do the brands look alike?” It is: what right is the claimant actually asserting?

Obtain the registration details, the mark as registered, the proprietor’s name, the relevant goods or services, the registration date and any assignment or licence history. Compare those details with the complaint. A demand may refer broadly to “our trademark,” while the registration it relies on is narrower than the business expects.

Section 54 of the Trademarks Act 2019 sets out the statutory acts that can amount to infringement of a registered mark. Broadly, it addresses use in the course of trade without consent where the signs and goods or services are identical, or where there is the required similarity and likelihood of public confusion. The precise statutory route matters. A claimant should not be allowed to skip it merely because its brand is well known within its own market. Trademarks Act 2019 (Act 815)

This is not a technicality. It frames the evidence that will matter and the response that should be made.

Identify the use your company is actually making

A company may use the same word in several different ways: as a product brand, company name, domain, social-media handle, advertising strapline, internal project name or descriptive reference. Those uses are not automatically the same.

Ask what the claimant complains about. Is it the mark on packaging? A marketplace listing? A paid search advertisement? A company name on an invoice? An old webpage that has not been updated? The answer can affect both liability and the practical way to reduce immediate risk.

A useful first exercise is to preserve dated examples of every relevant use. Keep the full webpage, advertisement or listing, not only a cropped logo. Record the product or service, accompanying words, customer journey, audience and territory. The legal question concerns use in the real world, not a redesigned comparison image prepared for the dispute.

Similarity does not end the analysis

A word, device or composite logo must be assessed in context.

Two marks may share a word but differ in their overall presentation, pronunciation, meaning, goods, customer base or route to market. Conversely, apparently modest visual similarities can matter more where the businesses sell competing goods through the same retailers or online platforms.

Suppose a specialist industrial software provider receives a demand from a consumer brand using a similar name. The marks may initially appear uncomfortable when placed side by side. But the relevant analysis may change once the product, buyers, sales process, pricing, descriptive material and market overlap are properly understood.

That is not a guarantee of a defence. It is why a business should resist drawing conclusions from the letterhead alone.

Gather product photographs, packaging, brochures, websites, pricing, sales materials, customer profiles and channel information. The strongest defence case is often built from a disciplined factual distinction rather than a broad assertion that “our business is different.”

Prior use and the commercial chronology

Timing can change the case.

Section 55(2) of the Act provides a statutory protection in a defined circumstance for continuous earlier use of an unregistered trademark in the course of trade, before the relevant earlier date identified in the provision. This is a specific rule with specific conditions; it is not enough merely to say that the company thought of the name first. Trademarks Act 2019 (Act 815)

The supporting documents therefore matter. Look for dated invoices, packaging orders, archived webpages, launch plans, design files, purchase orders, advertisements, distributor correspondence and sales records. The evidence should show what was used, for which goods or services, and when — not simply that a logo existed in a design folder.

There is another practical point. A long commercial history may create both opportunity and difficulty. It may support a defence position, but it may also reveal changes in branding, expansion into new product lines or earlier correspondence that must be addressed candidly. Give the full picture to defence counsel.

Good-faith and descriptive use

The Act also identifies certain uses that do not amount to infringement, including defined good-faith uses of a person’s or business’s name, and good-faith descriptive uses that indicate characteristics of goods or services. It further deals with use to indicate the intended purpose of goods or services, subject to honest commercial practice. Trademarks Act 2019 (Act 815)

These provisions are not a general permission to adopt a competitor’s mark and call it descriptive.

The relevant questions are practical: How is the wording being used? Is it genuinely identifying a characteristic or purpose? Is it prominent like a badge of origin? What did the business know? How would an ordinary customer encounter it?

A manufacturer referring to a compatible product may need to identify what it works with. That is a different situation from using the other party’s branding as the primary sign on its own product. The documents, layout and customer-facing presentation will matter.

Consent, licence and the history of the relationship

Some trademark disputes arise after a distributor arrangement, franchise, agency, joint venture or informal commercial collaboration ends.

If use began with permission, do not rely on a vague recollection that “we were allowed to use it.” Find the agreement, licence, emails, brand guidelines, termination notice and any renewal discussions. The documents may define the territory, product category, entity, duration, required approvals and what happens on exit.

The claimant may argue that any permission ended. The company may have evidence that consent continued, was renewed, was implied by a course of dealing, or was never limited in the way the claimant now alleges. Section 55 also addresses use that has been expressly or impliedly consented to in the circumstances it specifies. Trademarks Act 2019 (Act 815)

This area rewards accuracy. An expired licence is not automatically a complete defence; nor is a historic relationship irrelevant.

Scope and validity should be tested, not assumed

Registration is important. It is not an instruction to stop analysing.

Counsel may need to examine whether the asserted registration covers the actual case being advanced, whether there are material limitations in the register, and whether there are grounds to challenge the registration or oppose the claimed monopoly. The availability, forum, timing and merits of any challenge are separate legal questions. They should be assessed carefully, not used as a tactical threat without a proper basis.

This work can affect leverage. If the claimant’s registration is narrower, vulnerable or disconnected from the complaint, that may change the response. If it is strong and closely aligned with the defendant’s current use, management needs that advice just as clearly.

Factual distinctions can materially change risk

The company should prepare a short factual brief addressing:

• the goods and services each party actually supplies;

• customer types and decision-makers;

• sales channels, territories and platforms;

• the form and prominence of each sign;

• associated branding, house marks and explanatory wording;

• whether customers buy quickly, through intermediaries or after a lengthy procurement process;

• known instances of confusion, and the reliability of that evidence; and

• changes in use over time.

Do not cherry-pick. A business selling exclusively to procurement teams may have a different context from one selling inexpensive consumer goods online, but the other side may have evidence of overlap that needs a direct answer.

The objective is to give the lawyer a defensible factual record, not a sales pitch.

Defend the remedy as well as liability

A dispute is not binary.

Even where a company faces genuine liability risk, the scope of relief can be commercially decisive. The claimant may seek undertakings, an injunction, delivery up or destruction, damages or an account of profits, costs and broad corrective steps. Section 56 gives the court power to grant remedies in an infringement action, including injunctive relief and monetary or goods-related relief in the circumstances provided by the Act. Trademarks Act 2019 (Act 815)

That creates a second set of questions. Can any required change be phased? Is a specific product line the real issue rather than the whole business? What stock, campaigns, platform listings, distributor commitments or regulatory approvals would be affected? Does the proposed undertaking go further than the alleged conduct?

A well-negotiated outcome may narrow disruption without conceding more than the facts require. That is a core part of our trademark litigation defence work — the remedy is often where the commercial damage actually sits.

Counterclaims and strategic challenges

In some cases, a defence should be accompanied by an application or counterclaim that challenges the claimant’s asserted rights or seeks other responsive relief. In others, that would add cost, complexity and delay without improving the company’s position.

The right answer depends on the merits, evidence, commercial objective and procedure. It should be chosen because it advances a defined outcome — not because escalation feels more decisive.

Before taking that step, management should understand both questions. The legal question: is there a proper basis for the challenge? The commercial question: will it improve the company’s negotiating or litigation position enough to justify the cost and attention involved?

What your defence lawyer will need

Prepare the claim documents, trademark records, chronology of use, packaging and screenshots, agreements and permissions, sales records, marketing material, platform correspondence, product information and any evidence of business impact.

Also identify what is missing. A gap in the evidence is usually more manageable when it is identified early than when it appears after the company has taken a firm position.

Frequently asked questions

Is “we used it first” a defence in Malaysia?

It can be, but only in the defined circumstances in section 55(2), which protects qualifying continuous earlier use of an unregistered mark. The conditions are specific and the chronology has to be proved with dated documents.

Our logos look different. Is that enough?

Not on its own. Under the similarity route in section 54, the analysis takes in the marks as registered and used, the goods or services and whether there is a likelihood of confusion on the part of the public — not a side-by-side image alone.

Can we challenge their registration?

Sometimes. Scope, limitations on the register and grounds for challenge should be assessed properly rather than asserted as a tactic. Availability, forum and timing are separate questions.

Fight, narrow or settle?

The best answer is rarely produced by asking only whether the business can win.

A company may have a strong legal position but decide that a contained rebrand is commercially sensible. Another may need to defend firmly because its brand is central to a product launch, a licence arrangement, investment materials or a long-established market position. Settlement can be sensible; it should not be an uninformed reflex. Litigation can be justified; it should not become an expensive substitute for commercial judgment.

The decision should be made after the claimant’s actual case has been tested against your company’s documents, not before. If your company has been accused of trademark infringement, our trademark litigation defence service can assess the claim, identify the defence issues that genuinely matter, and build a strategy before your business gives concessions, undertakings or a settlement position.

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 application of the law depends on the facts, evidence and current law.

Related guides

• How defence counsel challenges a trademark claim

• Groundless threats of infringement proceedings under section 61

• How to respond to a trademark infringement allegation

• When a counterclaim is worth bringing