Trade Mark Lawyer Malaysia | Infringement & Registration

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Trade Mark Lawyer in Malaysia — Infringement, Registration & Enforcement

If you are searching for a trade mark lawyer in Malaysia, you are likely dealing with one of two urgent problems: someone is using a trade mark that is the same as or confusingly similar to yours — or you have been accused of trade mark infringement and need to defend your position. Both situations require specialist legal advice and, in many cases, fast court action.

At NZSK, our trade mark lawyers in Kuala Lumpur and Selangor advise on trade mark registration, trade mark infringement litigation, passing off claims, trade mark opposition and invalidation proceedings, and urgent enforcement applications. We act for Malaysian businesses, foreign brand owners, SMEs, and individual entrepreneurs — from offices in Mont Kiara, KL and Puchong, Selangor.

Why Choose Us?

Trade Mark Law in Malaysia — The Trade Marks Act 2019

Trade mark protection in Malaysia is governed by the Trade Marks Act 2019, which replaced the Trade Marks Act 1976. The 2019 Act introduced significant changes to Malaysian trade mark law — including the adoption of the Nice Classification system, sound and collective mark registrations, and strengthened remedies for infringement. Trade marks are registered with the Intellectual Property Corporation of Malaysia (MyIPO).

A registered trade mark in Malaysia gives the owner the exclusive right to use the mark in relation to the goods and services for which it is registered, and the right to take legal action against anyone who uses a sign identical to or confusingly similar to the registered mark without authorisation.

Trade Mark Infringement in Malaysia

Trade mark infringement under the Trade Marks Act 2019 occurs where a person uses, in the course of trade, a sign that is identical to or confusingly similar to a registered trade mark in relation to identical or similar goods or services — without the consent of the trade mark owner. The court may also find infringement where the sign is used on dissimilar goods or services if the registered mark has a reputation in Malaysia and the use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered mark.

Common forms of trade mark infringement we deal with in Malaysia include:

Counterfeit goods — the manufacture, importation, and sale of goods bearing a copy of a registered trade mark without authorisation — the most common and economically damaging form of infringement
Brand name copying — where a competitor adopts a name, logo, or get-up that is confusingly similar to an established brand to benefit from its reputation
Online infringement — the use of a registered trade mark in domain names, social media handles, e-commerce listings, and online advertising — including keyword advertising using a competitor’s trade mark
Parallel imports and grey market goods — the importation of genuine goods bearing a registered trade mark without the consent of the Malaysian trade mark owner or authorised distributor
Unauthorised licensing — purporting to sell goods under a licence that does not in fact exist or has been terminated

Passing Off in Malaysia — Protecting Unregistered Marks

Not all trade marks are registered — and even where a mark is not registered with MyIPO, the owner may still have rights under the common law tort of passing off. Passing off protects the goodwill of a business against misrepresentation by a competitor that causes, or is likely to cause, damage.

To succeed in a passing off claim in Malaysia, the plaintiff must establish three elements (the classical trinity from Reckitt & Colman v Borden): goodwill — that the mark has acquired a reputation and commercial goodwill in Malaysia; misrepresentation — that the defendant has made a false representation (whether intentional or not) that causes consumers to believe that the defendant’s goods or services are those of the plaintiff; and damage — that actual or likely damage to the plaintiff’s goodwill has resulted. Passing off is a useful remedy for businesses that have built up significant brand recognition but have not yet registered their trade mark, and for situations where the infringing conduct does not technically fall within the scope of the registered mark.

Trade Mark Registration in Malaysia

Registering your trade mark with MyIPO is the most effective way to protect your brand in Malaysia. A registered trade mark gives you a statutory monopoly right, provides a public record of your ownership, creates a presumption of validity, and significantly strengthens your position in any enforcement action.

We advise on trade mark clearance searches before filing — identifying potential conflicts with existing registrations — and on the most effective filing strategy, including the appropriate classes of goods and services, the specification of the mark, and whether to file as a word mark, device mark, or combination. We also advise on international trade mark registration through the Madrid Protocol, which allows Malaysian-based applicants to seek trade mark protection in multiple countries through a single filing.

Trade Mark Opposition & Invalidation

Where a new trade mark application has been published in the Trade Marks Journal and you believe it conflicts with your existing rights, you have the right to oppose the application before registration is granted. A trade mark opposition is filed with the Registrar of Trade Marks at MyIPO within the prescribed period after publication.

Where a trade mark has already been registered but you believe it should not have been — because it conflicts with your earlier rights, was obtained by fraud, or fails to meet the requirements for registrability — you may apply to invalidate the registration. We advise on both opposition and invalidation proceedings and on the strategic use of these tools in the context of broader brand protection.

Frequently Asked Questions

What is the difference between trade mark infringement and passing off in Malaysia?

Trade mark infringement is a statutory claim available only to the owner of a registered trade mark under the Trade Marks Act 2019. Passing off is a common law claim available regardless of whether the mark is registered — but requires proof of goodwill, misrepresentation, and damage. In many infringement cases, both claims are pleaded simultaneously: infringement for the registered mark, passing off as an alternative or for conduct that falls outside the scope of the registration.

How long does trade mark registration take in Malaysia?

A straightforward trade mark application in Malaysia typically takes 12 to 18 months from filing to registration, assuming no objection is raised by the Registrar and no opposition is filed. The process involves examination by MyIPO, publication in the Trade Marks Journal (allowing a 2-month opposition period), and — if unopposed — registration. We advise on expedited examination options where registration urgency is a commercial priority.

Can I protect my trade mark in Malaysia if it is registered overseas but not in Malaysia?

A trade mark registered in another country (such as the UK, US, or Singapore) does not give you registered rights in Malaysia — IP protection is territorial. However, well-known marks with a significant reputation in Malaysia may receive limited protection under the Trade Marks Act 2019 even without local registration. We advise on the Malaysian position for overseas-registered marks and on priority filing strategies to protect your brand in Malaysia.

What can I do if someone has registered my trade mark in Malaysia without my knowledge?

If you believe a trade mark has been registered in bad faith — for example, where a third party has registered your brand name in Malaysia knowing of your prior use and reputation — you may apply to invalidate the registration on the grounds of bad faith under the Trade Marks Act 2019. We advise on both invalidation proceedings and on urgent enforcement action where the registered mark holder is actively using the mark to compete with or deceive consumers.

What remedies are available in trade mark infringement proceedings in Malaysia?

The court may award: an injunction restraining the defendant from continuing the infringing use; damages (compensation for loss caused by the infringement) or, at the plaintiff's election, an account of profits (requiring the defendant to disgorge the profits made from the infringement); delivery up and destruction of infringing goods; and costs. Additional damages may be awarded where the infringement is flagrant. In criminal enforcement proceedings, fines and imprisonment are available as penalties.

Speak to a IP Lawyer Now!

Whether you are protecting your brand from infringement, defending a trade mark claim, or seeking to register your trade mark in Malaysia, contact NZSK for practical and commercially focused trade mark legal advice. Contact us to arrange a consultation.