What Should I Do If Someone Registered My Trademark?

Your heart probably sank when you found this out.

You type your brand name into the MYIPO Trademark Registry database… and there it is. REGISTERED.

But not under your name. Suddenly, the questions rush in:

Did I just lose my trademark? Can they sue me? Do I have to rebrand everything I’ve built?

Take a breath. This situation feels like a nightmare—but under Malaysian Intellectual Property law, it may not be the end of the story.

“The first person to file isn’t always the true owner.”

The Common Myth: “Whoever Registers First Wins”

Many entrepreneurs assume that trademark registration equals automatic ownership.

In reality, Malaysian trademark law is more nuanced.

In Malaysia, the person who registered the trademark first is not automatically untouchable. If that registration:

• does not meet legal requirements, or

• was filed by someone who is not the true owner,

you may still have strong grounds to challenge, cancel, or invalidate the trademark.

So, don’t panic. A registered trademark can still be attacked—legally and strategically.

When Can a Trademark Be Challenged or Invalidated if Someone Registered My Trademark?

Under the Malaysian Trademarks Act 2019, there are established legal grounds to oppose or invalidate a trademark

1️⃣ The Trademark Is Not Distinctive

(Section 23(1), Trademarks Act 2019)

If the trademark is:

• purely descriptive of the goods or services, or

• lacks distinctive character,

it may never have been entitled to trademark registration in the first place.

For example, think of trying to register “Fresh Milk” for milk. It describes the product—but it doesn’t distinguish the brand. If the registered trademark merely describes the product, it may be vulnerable to invalidation.

2️⃣ You Used the Trademark Earlier

(Section 24, Trademarks Act 2019)

If the registered trademark is identical or confusingly similar to your trademark, and you can prove earlier use, you may have a strong legal basis to challenge it.

This is where many entrepreneurs realise something crucial:

“I used it first… I just didn’t register it.”

Under Malaysian law, prior use still matters. Earlier evidence of use like invoices, social media posts, packaging, or websites can become powerful weapons, for you to oppose or invalidate the trademark.

So, if you find these grounds useful, what to do next?

First Step: Check the Trademark Status

Before taking action, you must answer one key question:

“Is the trademark application still pending, or already registered?”

This determines your entire strategy. It’s better to always check the MYIPO trademark status before spending money—or making threats.

If the Trademark Is Still Pending Registration

If the trademark has not yet completed registration, you still have early-stage options.

Option 1: File a Trademark Opposition

Once the trademark application is published in the MYIPO IP Journal, you may formally oppose the trademark application, present legal grounds to stop it from being registered. This is often the most cost-effective route. But, take note, timing matters! If you miss the opposition window, you may lose the opportunity.

Option 2: Issue a Cease and Desist Letter

If waiting for publication feels too slow, you may consider:

• engaging an IP lawyer to issue a cease and desist letter (sometimes known as a letter of demand),

• demanding the applicant to withdraw or assign the trademark application to you.

  
  

This can be effective, but also risky if done incorrectly. A poorly worded letter can backfire. So, it is always better conduct a thorough legal evaluation based on your background facts and evidence, before sending.

If the Trademark Is Already Registered

Here’s the turning point many business owners don’t expect. Once a trademark is fully registered, it can no longer be opposed at MYIPO.

At this stage, the only way forward is through the Courts, by applying for:

• Trademark revocation, or

• Trademark invalidation.

  
  

This is more serious, more technical—and more strategic. While court action is possible, but preparation and evidence decide everything.

How Can a Registered Trademark Be Removed?

Here’s the part most business owners don’t realise: A registered trademark is not invincible.

Under Malaysian law, a trademark can be taken off the register in two main ways:

1️⃣ Revoked – because it is not being used

2️⃣ Invalidated – because it should never have been registered in the first place

They sound similar, but legally, they are very different stories.

Route 1: Revocation — When a Trademark Is Not Used

(Section 46, Trademarks Act 2019)

Imagine this. Someone rushed to register a trademark, but after that… nothing happened.

No product. No service. No real business activity.

If a trademark is not used at all, it can be taken away.

What Does “Revocation for Non-Use” Mean In Simple Terms?

Revocation means the Court removes a trademark because the owner registered it, but didn’t genuinely use it in Malaysia.

Think of it like reserving a business name forever but never opening the shop.

When Can You Rely on Non-Use to Revoke a Trademark?

You may apply to Court to revoke a trademark if any of these happen:

🔹 1. No use for the first 3 years after registration

If, within 3 years from registration, the trademark:

• was not used in good faith in Malaysia, and

• there was no valid reason for not using it,

the trademark becomes vulnerable.

🔹 2. Use stopped for 3 continuous years

Even if the trademark was used before, it can still be revoked if:

• use stopped completely for 3 uninterrupted years, and

• there is no proper justification.

  
  

For Example - A brand once existed, then disappeared from the market for years.

🔹 3. The trademark becomes a “common name”

If the trademark turns into a generic word used by everyone in the industry, because the owner didn’t protect or control it, the Court may revoke it.

🔹 4. The trademark misleads the public

If the trademark’s use confuses consumers about quality, nature, or geographical origin, it can be revoked.

Important and Practical Timing Rules on Trademark Revocation

If the owner only starts using the trademark after 3 years, but before you file the revocation action → revocation may fail.

If they suddenly start using it within 3 months before you file the case, the Court may ignore that last-minute use.

Route 2: Invalidation — When the Trademark Should Never Exist

(Section 47, Trademarks Act 2019)

Now comes the more fundamental attack. Invalidation means the Court declares:

“This trademark should never have been registered at all.”

When Can a Trademark Be Invalidated?

🔹 1. It Was Not Distinctive or Was Descriptive

(Section 23 of the Trademarks Act)

Sometimes, a word which is commonly used in the industry may slip through the trademark registration process, because the Trademark Examiner is not aware of the full market context.

However, monopolising common industry terms is unfair to other players!

So the Trademark Laws actually allow an aggrieved person to invalidate a trademark, if the trademark describes the goods/services, or lacks distinctiveness.

So, if a registered trademark blocks an entire industry from using normal words, invalidation may be the answer.

🔹 2. There Was an Earlier Trademark or Earlier Right

(Section 24 of the Trademarks Act)

A trademark can also be invalidated if there was an earlier registered trademark, or an earlier right (such as prior use), and the later registration conflicts with it.

🔹 3. Fraud or Misrepresentation

If the trademark was registered through false information, or dishonest conduct, the Court can invalidate it outright.

In short, bad faith registration is a ticking time bomb.

A Registered Trademark Is Not the End of the Road

Discovering that someone else has registered your trademark can feel like hitting a wall at full speed.

Fear kicks in. Doubt follows. And many entrepreneurs quietly assume, “That’s it. I’m too late.”

But in Malaysian Intellectual Property law, obstacles are not always dead ends.

A trademark on the register is not automatically right, fair, or permanent. Some trademarks fall because they were never used. Others fall because they never deserved protection. The law was designed this way—so that the system protects real businesses, not paper registrations.

The most costly mistake isn’t losing a trademark.

It’s doing nothing because the situation feels overwhelming.

If you’re facing a registered trademark that blocks your business:

• pause before rebranding,

• don’t assume the other party has all the power,

• and don’t rely on guesses or online hearsay.

  
  

A short conversation with the right professional can often reveal options you didn’t know existed—whether that’s opposition, cancellation, invalidation, or a smarter commercial strategy.

Feel free to speak to LAWENCO to understand your options before making any irreversible business decisions!

Written by,

Lawrence Tan 

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor

Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.