Malaysia’s modern trademark regime is governed by Trademarks Act 2019 (Act 815) and Trademarks Regulations 2019, administered by MyIPO (Intellectual Property Corporation of Malaysia)World Inte.... As an important ASEAN market, Malaysia accepts multi‑class applications, unconventional marks including sound, scent, hologram and three‑dimensional marks, and recognises both registered trademark rights and common‑law passing‑off protection for unregistered marks. Many foreign brand holders only focus on obtaining registration certificates while overlooking unique local substantive rules, which may result in revoked registrations, invalidation or failed enforcement actions. This article covers seldom‑mentioned substantive provisions, focusing on licence arrangements, revocation for non‑use, well‑known‑mark protection, passing‑off requirements and multi‑channel enforcement mechanisms, delivering practical compliance guidance for brands operating in Malaysian offline retail, social commerce and cross‑border e‑commerce sectors.
Written signed trademark licence agreement constitutes a statutory validity prerequisite under the 2019 Trademarks Act. Different from the repealed old law which permitted oral licences, Section 69(3) explicitly requires trademark licences to be in writing and signed by or for the licensor, otherwise the licence has no legal effect between contracting parties. It is critical to note that licence recordal with MyIPO is NOT mandatory for internal contractual validity, unlike trademark assignment which requires compulsory recordal to oppose third‑party interests. Even so, recordal remains strongly recommended. Once recorded in the official trademark register, the licence creates constructive public notice and binds subsequent trademark title successors, except purchasers for valuable consideration. Unrecorded licensees cannot independently initiate trademark‑infringement proceedings against third‑party infringers. This rule creates frequent pitfalls for franchising, distribution and OEM projects. Brand managers cannot rely on informal email commitments or verbal arrangements to establish valid trademark licensing relationships.
Three‑year non‑use revocation represents the most frequent risk threatening registered trademark assets in Malaysia. Under Section 46 of the Trademarks Act, any aggrieved person may file revocation application if a registered trademark has not been put to bona‑fide commercial use within three years after registration notification, without proper justification. The legal definition of an “aggrieved person” imposes threshold restrictions: revocation petitioners must demonstrate legitimate commercial interest affected by the existing trademark registration; random third‑party speculative challenges will be dismissed directly. Pure overseas manufacturing, export‑only shipments, or merely accessible foreign‑websites viewed by Malaysian internet users do not qualify as valid local trademark use. Acceptable evidence includes local sales invoices, Malay‑English bilingual product packaging, retail receipts, domestic exhibition records, Malaysia‑targeted social‑media promotion and physical store signage. Statutorily accepted justifications for non‑use cover import regulatory delays and force‑majeure events; ordinary corporate operational difficulties do not count as valid excuses. Rights holders should systematically archive local‑use evidence throughout the whole trademark protection lifecycle.
Malaysia provides dual‑track trademark protection: statutory registered‑mark protection plus common‑law passing‑off protection for unregistered marks. Even without formal registration, brand owners can initiate passing‑off actions against competitors misappropriating business goodwill. Three essential elements must be satisfied: the claimant has established substantial goodwill within Malaysian territory; defendant’s conduct creates misrepresentation leading to public confusion; measurable damage or likelihood of damage has occurred. Passing‑off cannot grant exclusive registration rights; it only delivers injunctive relief and compensatory damages. For foreign brands entering Malaysia without timely filing applications, relying entirely on passing‑off creates high litigation uncertainty and heavy evidential burden.
Under Section 76 of the Trademarks Act, Malaysia implements well‑known‑mark protection complying with Paris Convention and TRIPS requirements. Well‑known marks enjoy cross‑class defensive protection even without Malaysian domestic registration. Right holders may oppose conflicting trademark applications or apply for invalidation against registered similar marks across dissimilar goods and services, to stop unfair free‑riding on established brand reputation. One vital limitation should be highlighted: if a well‑known‑mark owner knowingly acquiesces to third‑party similar‑mark use in Malaysia for five consecutive years, the owner will lose the right to seek subsequent injunctive remedies. When assessing well‑known status, MyIPO and Malaysian courts evaluate local public awareness, duration and geographic scope of use, promotion scale, prior registration history and third‑party recognition materials. Global popularity alone carries limited probative weight without supporting local‑market evidence.
For trademark dispute resolution, right holders possess multi‑layer enforcement pathways: administrative complaint to MyIPO enforcement division, civil litigation before Malaysian High Court, criminal prosecution against counterfeit goods manufacturers and dealers, and customs recordation for border interception of counterfeit shipments. Civil remedies include permanent injunctions, actual‑loss damages, profit‑account awards and reasonable royalty compensation; aggravated or exemplary damages may be granted for intentional bad‑faith infringement. Malaysian customs will not proactively seize counterfeit goods unless the trademark completes official customs IP recordal. Administrative procedures normally process obvious counterfeiting cases; complex likelihood‑of‑confusion disputes require civil court adjudication.
Regarding trademark‑related asset transactions, assignment, security charges and change of proprietor identity demand mandatory MyIPO recordal. Without recordal, assignees cannot claim compensation for infringements occurring prior to the assignment application date. Name‑or‑address amendments also need official updating. Out‑of‑date registered contact information will cause procedural documents to go undelivered, potentially resulting in missed response deadlines for revocation or invalidation proceedings. The trademark protection term is ten‑years calculated from application filing date; renewal applications can be submitted before expiry. No use‑evidence submission is required for renewal filings, yet non‑use‑revocation risk persists regardless of successful renewal.
For global brand strategists deploying Malaysian trademark portfolios, completing registration is merely the starting point. Enterprises must maintain complete written‑form licence documents, continuously preserve local‑market use evidence, accumulate well‑known‑mark supporting materials, complete assignment and security recordal timely, and prepare for both statutory trademark litigation and common‑law passing‑off scenarios. Ignoring these local‑specific substantive rules will significantly reduce practical value of Malaysian trademark assets.
IPcrossark：https://www.ipcrossark.com/en/trademark.html?cid=52
https://www.myipo.gov.my/trademark‑act/
https://www.wipo.int/wipolex/en/legislation/details/19564
https://www.myipo.gov.my/managing‑your‑trademark/
https://www.wipo.int/madrid/memberprofiles/#/result?countries=10042
