How to Prepare a Trademark Infringement Evidence Pack for Your Lawyer

A trademark infringement allegation often arrives as a short letter, an urgent email or a platform takedown. It may demand that your company stop using its brand, hand over profits, withdraw stock, or give undertakings within days.

The instinct is to explain why the other side is wrong. That explanation can wait.

Before a lawyer can assess whether the claimant has a strong case, whether your company has a defence, or whether a commercial settlement is sensible, they need a reliable picture of what happened and the documents that prove it. A well-prepared evidence pack does not decide the dispute by itself. It allows the legal assessment to start from facts rather than reconstruction.

This article explains what to prepare. It is deliberately not a guide to every defence or to the procedural steps after court papers have been served. Those are different questions.

Why the evidence pack changes the quality of advice

Trademark disputes turn on more than two logos placed side by side.

A lawyer will usually need to understand the claimant’s registered rights, the goods or services involved, how each party uses its mark, when that use began, the customers and channels involved, and what the correspondence actually says. A seven-page management summary may be useful, but it cannot replace the source material.

The difference matters commercially. If the first advice is built on incomplete dates, cropped screenshots or an untested assumption about ownership, the company may make an unnecessary concession — or take an unnecessarily aggressive position.

A good pack helps answer the questions that drive the next decision:

• What exactly is the claimant alleging?

• What rights are they relying on?

• What is your company actually using, and where?

• What documents prove the chronology?

• Is there a deadline or an injunction risk that changes the order of work?

• What would continued use, a rebrand, a negotiated resolution or a defence mean for the business?

Under Malaysia’s Trademarks Act 2019, a registered proprietor has statutory rights that may be enforced where the statutory requirements are established. But registration does not decide every infringement dispute by itself. The analysis can depend on the registered mark, the goods or services covered, the sign your company actually used, how it was used in the course of trade, the circumstances in which the signs are encountered and any applicable statutory non-infringement position or competing right. Trademarks Act 2019 (Act 815)

So start by preserving the facts.

Begin with a one-page chronology

The fastest way to make a dispute intelligible is usually a chronology. Keep it short, dated and supported by documents.

Include the date your company first selected the name or mark; design and approval dates; first sales or public use; applications or registrations; product launches; changes of logo, packaging or market; the first contact from the claimant; takedowns; settlement discussions; and every response deadline.

Do not guess at dates. If the launch date is based on an invoice, archived webpage or board approval, identify that document beside the entry.

A simple chronology may reveal the issue before anyone starts writing legal submissions. For example, a company may have used a name in a niche B2B channel for years, but the current packaging and online advertising only began recently. Those facts may point to different risks. Treating them as one uninterrupted story can obscure the decision.

Give the lawyer the claimant’s material in full

Provide the original documents, not only extracts or screenshots forwarded through messaging apps. That normally includes:

• cease-and-desist letters, emails and letters before action;

• court papers, affidavits, exhibits and orders, if proceedings have begun;

• registration certificates or registry extracts supplied by the claimant;

• screenshots, comparison tables and schedules attached to the allegation;

• demands for undertakings, delivery-up, damages, costs or an account of profits;

• correspondence with marketplaces, social-media platforms, distributors or customers; and

• envelopes, service records and email headers where the time of receipt matters.

The wording can matter as much as the allegation. A letter may target a particular logo, a product line, a company name, a domain name, a class of goods, or all of them. It may also impose a deadline that is commercially inconvenient but not necessarily the final legal deadline. Your lawyer needs to distinguish those things.

If the company has been served with court papers, preserve the service documents and obtain urgent advice. Treat the applicable procedural timetable as live unless your lawyer confirms that it has been extended or otherwise altered. Ongoing negotiations or commercial correspondence should not be assumed to suspend a court deadline.

Collect your own trademark and brand records

Next, gather the documents that show what the company believes it owns or is entitled to use.

This may include Malaysian and overseas registrations, pending applications, search reports, renewal records, assignment documents, licences, coexistence arrangements, brand guidelines, design briefs and records showing who developed the mark.

Ownership is a practical issue, not a formality. A mark used by a group company, founder or overseas parent may not be registered in the name of the operating company now accused of infringement. If there has been a business acquisition, restructuring or investment round, include the relevant transfer and licensing documents.

The aim is not to present the file as flawless. It is to allow the lawyer to see the rights position early, including gaps that may need to be addressed. This is the first thing our trademark litigation defence team looks for, because an ownership gap changes the response before any argument about similarity begins.

Preserve specimens of actual use

A registered word mark and a brand as encountered by customers are not always the same thing. Collect dated examples of how the disputed sign has actually appeared in the market:

• product packaging, labels and photographs;

• websites and archived webpages;

• advertisements, brochures and catalogues;

• social-media posts and paid campaigns;

• marketplace listings;

• invoices, purchase orders and delivery records;

• app-store pages, software interfaces and emails;

• storefront signage and event materials; and

• domain-name and account records.

Capture the full page where possible, including the URL and date. A cropped image that shows only the logo may not show the product, the explanatory wording, the audience or the channel — all of which may be important.

Preserve rather than quietly edit. Taking down a page may be commercially necessary after advice, but deleting the evidence of what was there can make later fact-finding harder. Record what changed, when and why.

Explain the commercial context

Trademark disputes are often argued in legal language, but a business decision cannot be made in a vacuum.

Prepare a brief note, supported where possible, on the products or services, customer type, sales channels, territories, pricing, distributors, retailers and the way customers normally find the brand. Include whether the company sells directly to consumers, only to procurement teams, through a marketplace, or via a dealer network.

Consider a software business whose product name resembles a consumer retail brand. The similarity may look uncomfortable in isolation. Yet the legal and commercial assessment may differ if the parties’ goods, buyers, channels and presentation are genuinely different. The reverse is also true: a modestly similar sign can become a serious risk where customers encounter both brands through the same platforms or distributors.

This information helps counsel assess exposure. It also helps management decide whether the disruption of changing the branding is proportionate to the risk.

Find contracts, permissions and the history between the parties

Not every dispute begins with strangers.

Look for licences, distribution agreements, franchise agreements, agency arrangements, consent letters, coexistence discussions, joint-venture documents, old settlement correspondence and prior dealings with the claimant. Include drafts if they show the history, but identify them as drafts.

A past permission may have limits. It might apply only to a territory, a product range, a particular entity or a fixed period. Conversely, an informal course of dealing may be relevant even when it is not a complete answer to the allegation.

Do not rely on memory alone. Find the documents and preserve the emails.

Prove earlier use and preserve the adoption history

If your company says it was already using the disputed sign before the claimant’s relevant rights arose, gather contemporaneous evidence. A qualifying continuous earlier-use position can be legally significant under section 55 of the Trademarks Act 2019, but whether it applies depends on the statutory requirements and the actual chronology. Trademarks Act 2019 (Act 815)

Useful records can include dated design files, invoices from designers or printers, internal approval emails, launch plans, marketing proposals, domain registrations, supplier correspondence, purchase orders and old website captures. Sales documents may be particularly useful because they can show the sign being used in the course of trade, not merely discussed internally.

Also preserve material showing how and why the brand was adopted, including evidence of independent development or what the relevant decision-makers knew at the time. That history may help counsel understand the facts and assess the dispute, but independent creation or lack of knowledge should not be treated as an automatic answer to trademark infringement.

Contemporaneous records usually carry more weight than explanations prepared after the allegation. A founder’s recollection may be entirely honest; it is still stronger when tied to a dated document.

This is also where the company should be candid. If a director knew of the claimant’s brand, say so to your lawyer. An accurate assessment is more valuable than a polished narrative that later collapses.

Show the business impact and the urgency

A lawyer needs to understand the legal claim. Management also needs advice that works in the real business.

Identify the stock, campaigns, launch dates, customer commitments, platform suspensions, distributor issues and revenue at risk. Include forecasts and costs of relabelling, reprinting, reprogramming, changing domains or notifying customers where those figures will affect strategy.

A company may be able to defend a claim but still decide that a controlled rebrand is the sensible commercial outcome. Another may have a strong reason to resist because the disputed brand is central to a major launch or regulated product approval.

The legal question is whether the claimant can establish the claim. The commercial question is what each realistic response will cost the company. Both should be visible in the evidence pack.

Flag what is missing

Do not try to make the file look stronger by hiding gaps.

Say if archived webpages cannot be located, a former designer has the original files, an overseas affiliate controls the registration, or the company cannot yet verify its first sale date. Tell your lawyer which facts are disputed internally and who may know more.

That candour is strategically useful. Missing evidence can affect the advice, the first response, the requests made to the other side and the amount of investigation worth doing before the company commits to a position.

What not to do before sending the pack

Some actions create avoidable problems.

Do not delete webpages or social posts without first preserving them. Do not backdate documents, alter records, create a reconstructed chronology and present it as contemporaneous, or ask staff to “clean up” their communications.

Do not make informal admissions to the claimant, their lawyers, a marketplace or mutual business contacts. If the company wants to explore settlement, take advice on how the communication should be framed rather than assuming that conciliatory correspondence will automatically be protected from later use.

Keep the evidence pack controlled. Use a shared folder with sensible access restrictions, preserve original files where possible, and record who has collected what.

Frequently asked questions

How complete does the pack need to be before we get advice?

Complete enough to triage. If there is a live deadline or injunction threat, do not wait for every historical document — send what you have and collect the rest deliberately.

Should we include documents that hurt us?

Yes. A difficult email is manageable when counsel sees it early and far more damaging when it surfaces after the company has taken an inconsistent position.

Can we just send screenshots from WhatsApp?

Forwarded screenshots often lose the URL, the date, the surrounding page and the email headers. Send originals wherever possible and capture full pages rather than cropped logos.

Which route fits your situation

The pack enables a focused defence assessment: the claimant’s rights and allegation, the evidence of your company’s use, potential factual and legal defence routes, urgency, injunction exposure, evidential weaknesses and the commercial options.

It also makes the first legal response more useful. Sometimes the right next step is to seek clarification, request time, preserve the status quo or investigate further. Sometimes it is to negotiate. Sometimes the company needs urgent court-focused advice. The facts decide the sequence.

If your company has received a trademark infringement allegation, our trademark litigation defence service can identify the material needed to assess the claimant’s rights, your company’s use, available defence routes, urgency and the appropriate response strategy.

This article provides general information on Malaysian trademark disputes as at 16 August 2026. It is not legal advice and does not create a solicitor-client relationship. The outcome will depend on the facts, documents and applicable law.

Related guides

• How to respond to a trademark infringement allegation

• What to do immediately when court papers are served

• The defences available in a trademark infringement claim

• How a claim against your company is assessed