Can You Stop a Competitor From Using Your Trademark During a Court Case?
- IP Gennesis
- 31 minutes ago
- 6 min read
Imagine this: one morning you walk into a supermarket — or scroll through Shopee or Lazada — and there it is. Your brand name, proudly displayed on someone else’s product. You’ve spent years building that name, and you even have a registered trademark.
Your first instinct?
“Sue them for trademark infringement!”
You’d be right — but here’s the problem: court cases can take months, sometimes years, to resolve. Meanwhile, your competitor keeps selling, keeps earning, and keeps confusing your customers.
So, what can you do before the case finishes?
The answer lies in a powerful legal tool called an interim injunction — a temporary court order that can stop your competitor from using your trademark right now, even before the full case is decided.
What Is an Interim Injunction?
An interim injunction is a temporary court order that tells someone to stop doing something — usually to prevent ongoing harm before a case ends.
In the context of Intellectual Property or trademark infringement, it’s often used to stop a competitor from using your trademark while your main case is still in court. Think of it as a “pause button” that protects your brand before the final judgment.
When Can You Apply for an Interim Injunction?
Many entrepreneurs assume injunctions are granted only after a case concludes. But that’s not true.
Under Section 56 of the Trademarks Act 2019, a trademark owner can apply for an interim injunction during the case.
In short — you don’t have to wait years for justice. You can take immediate legal action to stop the ongoing misuse of your brand.
Legal Test for Interim Injunction: The Keet Gerald Case
The leading Malaysian case — Keet Gerald Francis Noel John v Mohd Noor bin Abdullah [1995] 1 MLJ 193 — sets out the three key questions judges ask before granting an interim injunction:
1) Is there a serious issue to be tried? - Is your claim genuine and supported by evidence?
2) Where does the balance of convenience lie? Would granting the injunction cause more harm or prevent greater harm?
3) Is monetary compensation (damages) enough to fix the problem? If not, an injunction may be justified.
It’s important to note that the Court won’t automatically grant an interim injunction — each case depends on its unique facts and evidence.
Case Study: Malaysia Airlines vs AirAsia — When the Court Said “Stop Using That Trademark!”
One of the most talked-about cases on interim injunctions in Malaysia is Malaysia Airlines Sdn Bhd & Flyfirefly Sdn Bhd v AirAsia Com Travel Sdn Bhd [2023] 9 CLJ 65.
This case shows how an interim injunction can be a powerful weapon to stop ongoing trademark misuse — even before the full trial ends.
The Background
Malaysia Airlines (MAS) and its subsidiary Firefly discovered that AirAsia’s SuperApp was selling their flight tickets using the “Malaysia Airlines” and “Firefly” trademarks — all without permission.
MAS wasn’t happy (for good reason). They sued AirAsia for trademark infringement and applied for an interim injunction to stop AirAsia from continuing to sell tickets using those marks while the case was still in progress.
What the Court Considered
When deciding whether to grant the injunction, the Court relied on the Keet Gerald test and examined four main factors:
Was there unreasonable delay by MAS?
AirAsia argued that MAS waited eight months before filing its application.
The Court disagreed, noting that MAS had first tried to resolve the issue privately before resorting to legal action. The delay was therefore reasonable.
Are there serious issues to be tried?
Yes. The dispute involved clear questions of trademark infringement, which deserved to be examined fully at trial.
Does the balance of convenience favour MAS?
Yes again. The Court noted that customers were genuinely confused, complaining to MAS after buying tickets through the SuperApp.
More importantly, AirAsia had asked for MAS’s permission to sell those tickets — and proceeded anyway after being refused.
Is monetary compensation enough?
No. The Court found that reputation and goodwill losses cannot be easily measured in money. Once trust is lost, it’s hard to rebuild.
The Outcome
The Court granted the interim injunction. AirAsia was ordered to stop using the “Malaysia Airlines” and “Firefly” trademarks and cease selling those tickets on its app until the trial concluded.
This case reaffirmed that Malaysian courts take unauthorised trademark use seriously — especially when it misleads the public or harms a brand’s goodwill.
Not every application for an interim injunction succeeds.
Case Study: Adleesya Beauty vs Nadia — When the Court Said “No” to Both Sides
The 2024 case of Adleesya Beauty Sdn Bhd & Anor v Khairunisa Nadia Karip [2024] CLJU 141 shows how courts may refuse an injunction when granting it would unfairly harm both sides.
The Background
This story began as a successful beauty business — and ended as a courtroom battle between a husband and wife.
They started small, selling skincare products under the brand “WOMEN DESIREE.”
At first, the wife ran the business as a sole proprietorship, but as it grew, they incorporated two companies together: the husband owned 80% of the shares, and the wife 20%.
Here’s where things got messy:
The trademarks for “WOMEN DESIREE” were filed under the wife’s name, not the company’s.
After the couple separated, the wife launched a new business selling “WOMEN DESIREE AGELESS CREAM.”
She later resigned as a director, leaving the husband in full control of the companies (the “Husband’s Companies”).
Soon after, the Husband’s Companies sued the wife, claiming she had fraudulently registered the trademarks and demanding she stop using the brand.
In response, the wife counterclaimed, asking the Court to stop the Husband’s Companies from using her trademarks — arguing that she was the original creator and driving force behind WOMEN DESIREE.
Both sides then applied for interim injunctions while waiting for trial:
The Husband’s Companies wanted to stop the wife from selling her product.
The wife wanted to stop the companies from using the WOMEN DESIREE trademarks.
What the Court Considered?
Are there serious issues to be tried?
Yes. The Court agreed there were genuine disputes about who truly owned the trademarks and who built the brand.
Does the balance of convenience favour an injunction?
No. Granting an injunction to either side would shut down both businesses, something the Court considered too severe. The judge preferred to let both continue operating until the full trial could decide ownership.
Is monetary compensation enough?
Yes. Since both parties were seeking damages, the Court decided that money could adequately compensate the injured party later.
In the end, the Court rejected both interim injunction applications.
Neither side could stop the other from using the “WOMEN DESIREE” trademarks — at least until the trial concluded.
This case highlights that interim injunctions are not automatic, even in trademark disputes. The Court always looks at the practical consequences and aims to prevent unnecessary hardship.
Key Takeaways for Business Owners
An interim injunction allows you to stop your competitor from using your trademark even before the trial ends.
However, it isn’t granted automatically. The Court will always weigh factors such as delay, seriousness of the issues, balance of convenience, and adequacy of damages.
Every case turns on its own facts — as seen in the contrast between Malaysia Airlines vs AirAsia (injunction granted) and Adleesya Beauty vs Nadia (injunction refused).
Don’t Wait Until It’s Too Late — Register Your Trademark Today
Most business owners only think about trademarks after someone copies their brand — by then, it’s often too late.
A registered trademark gives you the legal right to act fast — including the power to apply for an interim injunction the moment infringement occurs. Without it, your hands are tied.
At IP Gennesis, we help entrepreneurs secure their Intellectual Property early — from trademark registration to brand enforcement when needed.
👉 Register your trademark today so you can protect your business the moment someone tries to profit from your brand.
Written by,
Senior Legal Executive
LL.B (HONS), LL.M
Advocate & Solicitor of Malaya (Non-practising)
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor
Disclaimer
This article is for general reference only and does not constitute legal advice. The information is sourced from the internet and third parties, and while efforts are made to ensure accuracy, no guarantee is given as to its completeness or reliability