Can You Register a Well-Known Foreign Trademark in Malaysia? A Simple Guide for Entrepreneurs
- IP Gennesis
- 4 days ago
- 6 min read
Short answer: You generally cannot register a well-known foreign brand as your own trademark in Malaysia — even if it is not registered here.
A Real Case Study: When a Trademark Application Gets Refused for Using a Foreign Well-Known Brand
A client recently approached us in distress: the trademark application they had filed by themselves with the Intellectual Property Corporation of Malaysia (“MyIPO”) had been refused. The Registrar’s reason? The proposed mark was considered identical or confusingly similar to a well-known foreign clothing brand.
When we first reviewed the name the client attempted to register, we admittedly paused.
“Are you certain you want to proceed with this name?” we asked.
“Yes,” the client responded. “I want to use it for my café. I even checked — the clothing brand isn’t registered in Malaysia. So why did MyIPO refuse my trademark application?”
We then asked the obvious question: “But this clothing brand is well-known worldwide, isn’t it?”
“Yes, I know… but if it’s not registered here, why does it matter? Isn’t trademark registration territorial?”
Ordinarily, yes. Trademark protection is territorial. But that is not the whole story.
There is a key exception embedded in Malaysian law: the protection of well-known marks.
Trademark Protection is Territorial…BUT With Exceptions
In principle, trademark rights only apply within the jurisdiction where the mark is registered. For example, a mark registered in Malaysia is enforceable only in Malaysia. Businesses seeking overseas protection must file internationally—either through individual national filings or via international systems like the Madrid Protocol.
Similarly, A foreign brand can only be protected in Malaysia if it obtains trademark registration with MyIPO.
However, the doctrine of territoriality has limits.
Where a global brand has not registered its trademark in a particular country, it may nonetheless enjoy protection if the mark is considered “well-known” in that jurisdiction.
This principle originates from Article 6bis of the Paris Convention for the Protection of Industrial Property. Malaysia incorporates these principles into domestic law under the Trademarks Act 2019 (“TMA 2019”).
This rule prevents people from taking a famous overseas brand and registering it locally for their own use.
Why is the registration of a well-known trademark prohibited in Malaysia?
To stop opportunistic registrations
To protect global brands with established reputation
To prevent consumer confusion
To maintain a fair marketplace
This applies even if the foreign brand is used for a different product (e.g., clothing vs. café). If the brand is well-known, MyIPO can still refuse the application.
What Is a “Well-Known” Mark Under Malaysian Law?
Section 4 of the TMA 2019 defines a well-known mark as a mark that is well-known in Malaysia and belongs to a person who is:
a national of a Convention country; or
domiciled in, or has a real and effective industrial or commercial establishment in, such a country.
This is the case whether or not that person conducts business or has goodwill in Malaysia.
In other words, even if the brand has never entered the Malaysian market, never sold a single product here, and never registered its mark locally, it may still be entitled to protection if it is widely recognised by the Malaysian public.
Cross-Category Protection for Well-Known Mark: Beyond Similar Goods or Services
A normal trademark registration usually protects only related or similar products.
But a well-known trademark enjoys broader protection, even for dissimilar goods or services—provided certain conditions under Section 76 of the TMA 2019 are met, for example:-
if the use of the local trademark would indicate a connect between those goods or services and the proprietor of the well-known trademark;
there is a likelihood of confusion on the part of the public because of such use;
interest of the proprietor of the well-known trademark are likely to be damaged by such use.
Why MyIPO Refused Our Client’s Trademark Application: Conflicts with Well-Known Mark
In reviewing the Client’s matter, MyIPO relied on Section 24 of the TMA 2019. This section lists the relative grounds for refusal, meaning MyIPO can reject a trademark application if it conflicts with an earlier trademark or well-known trademark.
In our client’s case, the Registrar’s decision centred on three key issues:
Similarity Between the Marks
MyIPO found that the two marks were visually and phonetically similar, also conceptually close enough to raise concerns, even though they were filed in entirely different classes of goods and services.
Because when the earlier mark is a well-known foreign trademark, even small similarities are enough to trigger a red flag.
Likelihood of Public Confusion
Importantly, only a likelihood of confusion, is sufficient to refuse a trademark application. Under the Malaysian TMA, MyIPO can refuse a trademark if consumers may mistakenly believe there is a connection between the two brands.
Consumers encountering the café name could reasonably wonder:“Is this well-known clothing brand expanding into the food and beverage space?”
Given the rise of lifestyle branding and cross-sector collaborations, such an assumption is not unrealistic.
The law does not require evidence of real confusion. A potential or likely confusion is enough.
Legal Risks of Using a Mark Similar to a Well-Known Brand in Malaysia
Many entrepreneurs assume they are “safe” as long as the famous brand is not registered in Malaysia.
But Section 76 of the TMA 2019 says otherwise. Even if the well-known brand has never filed a trademark application here, it still enjoys legal protection.
If you proceed to use or register a similar name, you may face several risks.
Risk of Injunctions
The owner of the well-known mark may apply to court for an injunction restraining further use, pursuant to Section 76 (2) of the TMA 2019. This is a Court order requiring you to stop using the mark or change your business branding entirely.
Invalidation of Registration
Some entrepreneurs try to “beat the system” by rushing to file first. But Section 76(3) of the TMA 2019 allows the owner of a well-known mark to apply for invalidation of your registration. This means that your registered tradmeark can be cancelled.
Received a MyIPO Trademark Refusal? What You Should Do Next
If you receive a refusal from MYIPO, the most important thing is this: Don’t Panic!
Trademark refusals are common, and many can be resolved — but only after a proper assessment of the case.
Before appealing, filing arguments, or changing your brand name, we usually help clients evaluate three key questions.
Is the earlier brand clearly a well-known trademark in Malaysia?
Did you know the well-known brand before filing? (Good faith matters)
Are the marks similar? Even across different goods and services?
In the client’s case, all the above three questions turn out to be positive.
And, proceeding further would expose the client to unnecessary cost, heightened legal risks, and potential enforcement action by the well-known brand.
What Our Client Ultimately Decided: A Strategic Way Forward
So our Client took the following strategic steps.
Withdraw the Trademark Application
Withdrawing now prevents further complications and stops the clock on any potential opposition or enforcement action.
Rebrand or Modify the Proposed Mark
The client will consider creating a completely new invented name. This approach reduces the risk of future refusal and avoids conflict with established rights. A clean rebrand now is cheaper than a forced rebrand later.
Conduct a Proper Clearance Search Before Filing Again
Before settling on a new name, it is crucial to perform a comprehensive trademark clearance search—covering not only identical marks but also similar marks, well-known brands, and industry-specific risks.
A proper search significantly increases the chances of securing registration and minimises the likelihood of future disputes.
Conclusion: How to Choose a Strong, Registerable Brand in Malaysia
Ultimately, while trademark law is territorial, well-known marks enjoy a powerful layer of protection in Malaysia. This protection extends far beyond identical products and can easily block or challenge marks filed in unrelated industries. As our client’s experience shows, attempting to adopt a name associated with a globally recognised brand, whether intentionally or accidentally, creates significant legal and commercial risk.
When a mark conflicts with a well-known brand, pursuing registration is rarely worth the cost, uncertainty, and potential disputes that follow. Instead, investing in a distinctive, original brand identity is not only safer but strategically wiser for long-term business growth.
At IP Gennesis, we always encourage clients to:
always be creative and coin a new brand
conduct proper clearance searches,
avoid marks that tread too close to famous brands, and
choose names that they can confidently build upon for years to come
register a trademark with good faith
If you would like assistance with clearance searches, naming strategies, or global trademark protection strategy, our team is ready to help ensure your next trademark is both protectable and future-proof.
Written by,
Low Vee Vien
IP Associate
LL.B (HONS)
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor
Disclaimer: This article is for general information only and does not constitute legal advice. For advice on your specific situation, please consult a qualified Intellectual Property Professional
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