Trademark Search

Trademark rights may be acquired through registration and common law first use. A registered trademark serves as a clear indication to the public and trade that the trademark belongs to a proprietor. As such, it is important to file a trademark application when you intend to use and build your brand in the marketplace.

Prior to filing a trademark application, it is advisable to seek professional advice on whether the trademark is inherently distinctive and capable of registration as well as to conduct a trademark search to identify any potential risks of refusal or conflicts arising from existing similar trademarks.

Trademark Application

When you are the bona fide proprietor of a trademark, whether already in use or intended to be used in your business, you may apply for registration in Malaysia. Upon filing, the application will undergo a formality examination to check on compliance with the applicable regulations. In the event of any formality refusals, it is important to respond within the stipulated time to avoid the application being deemed as withdrawn.

Trademark rights are territorial in nature. Protection obtained in one country does not automatically extend to another. Accordingly, businesses with plans for regional or international expansion should consider conducting availability searches and securing trademark registrations in the relevant jurisdictions where protection and commercial growth are intended.

For more insights on trademarks, please visit our newsletter page.

Trademark Renewal

 A trademark registration is generally valid for 10 years and may be renewed perpetually upon renewal. It is important to renew your trademark registration before its expiry date to avoid late renewal penalties and the risk of your trademark registration lapsing. If you are unsure when your trademark is due for renewal, we warmly welcome you to arrange an appointment with us for us to assist you in checking your trademark renewal status and keeping you alerted of renewal deadlines.

Trademark Refusals

Upon filing a trademark application, it will undergo both formality and substantive examination. Upon passing the formality examination, the application will proceed to substantive examination. At this stage, the application may be provisionally refused on two primary grounds namely absolute grounds for refusal pursuant to Section 23 of the Trademarks Act 2019 and relative grounds for refusal pursuant to Section 24 of the Trademarks Act 2019. Absolute grounds relate to the inherent registrability of the trademark including but not limited to whether the trademark is capable of distinguishing, descriptive of the kind, quality, intended purpose, or characteristic of the goods or services, or customary in the current language of the territory. Relative grounds concern conflicts with earlier rights whether the trademark is identical with or confusingly similar to an earlier trademark or rights.

Upon notification by the Registrar, the applicant is typically given a period of two (2) months to respond to the provisional refusal. The applicant may respond either by way of written submissions or ex-parte hearing. In both instances, written submissions will be prepared to set out the relevant legal arguments supported by statutory declarations and evidence of use.

We will accordingly prepare and file comprehensive written submissions, statutory declarations, and supporting evidence in support of your application. Throughout the process, we take into careful consideration your brand concept, market positioning, and long-term objectives in order to formulate practical and strategic approaches towards overcoming any refusal.

Trademark Opposition Proceedings

Once a trademark application is accepted, it will be published for a period of 2 months. During this publication period, any person may oppose the trademark application by filing a Notice of Opposition.

If you are a registered proprietor of a trademark or a common law first user of a trademark, it is important to regularly monitor published applications. This provides an early opportunity to stop a trademark that is identical or confusingly similar to your trademark or existing rights from proceeding to registration.

Opposition proceedings involve a structured exchange of pleadings and evidence including:

• Notice of Opposition (filed by an opponent)
• Counterstatement (filed by an applicant)
• Evidence in Support of opposition or application (both parties)  
• Written submissions (filed by both parties)
• Issuance of decision

Each stage requires careful preparation of legal arguments setting out the grounds of opposition, supporting evidence, and strict compliance with the prescribed mode of service and timelines.

At Huei Sze & Co, we take a considered and strategic approach to opposition proceedings. We journey alongside you from assessing the strength of your position to preparing submissions and evidence, so that you are well-prepared to navigate each stage of the proceedings with clarity and confidence.

Filing Trademark Applications Overseas

Trademark rights are territorial in nature. Registration of a trademark in one country does not automatically confer protection in another. As such, where a business intends to expand its brand overseas, it is important to secure trademark protection in each intended country.

Prior to filing a trademark application overseas, it is prudent to conduct availability search in each intended country. This enables early identification of earlier rights or potential conflicts and reduces the risk of having to adopt different trademarks in different markets which may dilute brand consistency and value.

Businesses seeking protection across multiple jurisdictions may consider filing through national applications in the respective countries or via Madrid System. Madrid System provides a centralised filing mechanism which in appropriate case,  may offer cost efficiencies and facilitate streamlined management of trademark portfolios across multiple countries.

At Huei Sze & Co, we work closely with our clients to assess the availability of their trademarks across jurisdictions and to develop a filing strategy aligned with their expansion plans. We also provide comparative fee estimates between national filings and Madrid applications to support informed and practical decision-making.

We warmly welcome you to make an appointment with us to conduct availability searches and to explore the most suitable filing approach for your business.

Patent Prior Art Search, Drafting, Filing, and Renewal

At Huei Sze & Co, our patent team is led by Mr. Ian, a patent agent with more than 20 years of experience in the field of intellectual property law. We provide end-to-end support in patent protection, from prior art search to patent portfolio management, ensuring that our clients’ inventions are secured in a timely and commercially meaningful manner.

A key starting point in the patent process is the prior art search, where we assess the novelty of an invention by reviewing existing patents and publicly available disclosures. This allows us to evaluate the likelihood of obtaining protection and to refine the scope of the invention before proceeding with filing. Prior art search is critical in avoiding unnecessary costs and aligning the filing strategy with the client’s commercial objectives.

Following this, we coordinate the drafting and filing of patent applications including the preparation of specifications, claims, and supporting documents in accordance with legal and technical requirements. In this regard, timing and confidentiality are of paramount importance. In order to obtain patent protection, an invention must be new at the time of filing. Any disclosure to the public prior to filing including presentations, marketing materials, exhibitions, or discussions with third parties may affect the ability to secure protection. As such, we advise our clients to adopt a “file first, disclose later” approach and to put in place appropriate non-disclosure arrangements where early discussions are necessary.

Once a patent is granted, it provides exclusive rights for a period of up to 20 years from the filing date, subject to the payment of prescribed renewal fees. We assist our clients in monitoring renewal deadlines and managing the maintenance of their patent portfolios, both in Malaysia and internationally, to ensure that valuable rights remain in force without interruption.

Our approach is practical and strategic. We not only guide our clients through the technical aspects of patent protection, but also ensure that their intellectual property strategy supports their broader business goals, from development through to commercialisation and long-term growth.

Industrial Design Search, Application, and Renewal

An industrial design protects the visual appearance of a product including its shape, configuration, pattern, or ornamentation. It is concerned with how a product looks, rather than how it works. For businesses, this often forms a key part of brand identity, influencing how products are recognised and differentiated in the market.

To qualify for protection, an industrial design must be new at the time of filing. This means that the design must not have been disclosed to the public prior to the application. Any prior disclosure whether through product launches, marketing materials, exhibitions, or online platforms may affect the ability to obtain protection.

In Malaysia, industrial design applications are administered by MyIPO. The application process requires clear representations of the design showing the features for which protection is sought. Careful preparation at this stage is important to ensure that the scope of protection is properly defined.

Once registered, an industrial design is protected for an initial period of 5 years from the filing date and may be renewed for further consecutive periods of 5 years, up to a maximum duration of 25 years, subject to the payment of renewal fees. Timely renewal is essential to maintain protection, and failure to renew may result in the loss of rights.

At Huei Sze & Co, we assist our clients throughout the entire process—from assessing registrability and preparing applications, to managing renewals and maintaining their design portfolios. Our approach is to ensure that our clients’ designs are protected at the right time, in the right way, and in alignment with their broader business strategy.

Copyright Protection and Voluntary Notification

Copyright protection arises automatically upon the creation of an original work. Under the framework of the Berne Convention which has been adopted by most countries worldwide including Malaysia, Singapore, China, the United States, and European jurisdictions, copyright enjoys international recognition without the need for formal registration. This means that once a work is created whether literary, musical, artistic, films, sound recordings, or broadcast, it is generally protected not only in the country of origin, but also across other member countries. Each member country is required to accord foreign works the same level of protection as it grants to its own nationals, ensuring consistent protection across jurisdictions.

While registration is not a requirement, practical enforcement depends on the ability to establish ownership and subsistence of rights. In this regard, maintaining proper records, agreements, and evidence of creation is critical, particularly where works are created by employees, contractors, or collaborators.

In Malaysia, a system of voluntary notification is available through MyIPO which allows copyright owners to formally record their ownership. Such notification may serve as prima facie evidence in enforcement and dispute situations.

Copyright generally protects the expression of ideas rather than the ideas themselves, and grants the owner exclusive rights to control reproduction, distribution, communication, performance, and adaptation of the work. The duration of protection is typically based on the life of the author plus a prescribed number of years, depending on the jurisdiction such as 50 years for Malaysia.

At Huei Sze & Co, we assist clients in managing their copyright protection across jurisdictions including advising on ownership structures, preparing appropriate agreements, and supporting enforcement strategies where necessary. We ensure that our clients’ creative works are not only protected in principle but are also supported by the documentation and strategy required for effective commercial use and enforcement.

Cease-and-Desist Actions

In today’s fast-paced commercial landscape, coupled with the widespread use of social media platforms, brand visibility and exposure are amplified at an unprecedented speed – often extending beyond a business’s home jurisdiction.

While this presents significant opportunities to accelerate brand recognition and market reach, it also gives rise to real risks, including third parties registering your brand in other jurisdictions ahead of you as well as unauthorised use, infringement, and passing off.

We recognise that the cost of initiating and navigating court proceedings can be significant and burdensome for most businesses, whether you are enforcing your rights or defending an allegation. As such, it is often prudent to first explore the possibility of an early and commercially sensible resolution.

A common starting point is the issuance of a cease-and-desist letter or responding to one received. From an enforcement perspective, this serves to put the other party on notice of your rights, set out the basis of your concerns, and provide an opportunity for rectification within a specified timeframe. From a defence perspective, a timely and well-considered response is equally critical to clarify your position, manage legal risk, and avoid unintended admissions.

The effectiveness of a cease-and-desist action lies in its careful drafting and the strategic management of communications, both of which must be calibrated to achieve the desired outcome – often a practical and commercially viable settlement.

If you foresee a potential risk of infringement, we invite you to consult us. We will assess your concerns, evaluate the strength of your rights, and guide you in taking the appropriate steps to protect your position with clarity and confidence.

Settlement Negotiations

Legal disputes are often disruptive, costly, and time-consuming. In many instances, a well-structured and strategically negotiated settlement can achieve more commercially advantageous outcomes than protracted litigation.

Whether arising from intellectual property rights or broader commercial matters, an effective settlement requires more than compromise – it requires a clear and strategic approach.

In intellectual property disputes, it is critical to undertake a comprehensive assessment of the parties’ respective brand histories, market positioning, and the relative strengths and vulnerabilities of their rights. Careful consideration is also given to the distinctions between the parties’ branding as well as identifying areas where consensus may be achieved to facilitate a practical resolution.

In commercial disputes, our focus is on restoring structure and clarity to communications between parties particularly where relationships have become strained or fragmented. We guide our clients towards practical solutions that mitigate potential losses, manage legal and financial exposure, and reduce the overall burden on our clients while preserving, where appropriate, the underlying commercial relationship.

IP Infringement and Passing Off

What is Trademark Infringement and Passing Off?

A trademark is infringed where a person, without the consent of the proprietor, uses in the course of trade a sign that is identical with or similar to a registered trademark in relation to goods or services which are identical with or similar to those for which the trademark is registered, where such use is likely to cause confusion on the part of the public.

Where a trademark is not registered, protection may still be available under common law passing off. This arises where a person, as the first user of a trademark, has acquired goodwill in that trademark through use in the course of trade. On this basis, the law protects such goodwill against misrepresentation by third parties. To succeed in a passing off claim, it is generally necessary to establish that (i) goodwill has been acquired in the trademark, (ii) there has been a misrepresentation by the offending party leading or likely to lead the public to believe that its goods or services are those of, or are associated with, the claimant, and (iii) damage has been or is likely to be suffered as a result of such misrepresentation.

In today’s competitive marketplace, once products are commercialised, the risk of imitation or encroachment becomes a real concern. However, what matters is whether businesses are sufficiently protected and strategically prepared to respond. At Huei Sze & Co, we assist our clients in safeguarding their intellectual property rights by putting in place appropriate protection strategies together with active portfolio management, to ensure that clients are well-positioned to address unauthorised use, infringement, and misuse in the marketplace. Our approach is both strategic and commercially driven. We take into consideration each client’s strengths and vulnerabilities and advise on the most suitable enforcement strategy. This may include issuing cease-and-desist letters, engaging in without-prejudice negotiations, exploring settlement or commercial resolutions, and where necessary, initiating legal proceedings. Where appropriate, we also work closely with the relevant enforcement authorities in relation to raids and border control measures to prevent the circulation of infringing goods.

Corporate Agreements

Strong corporate structures form the legal foundation of a successful business. Yet, in practice, many disputes arise not from bad intentions, but from agreements that fail to anticipate how a business and the relationship between its stakeholders will evolve over time.

Poorly drafted corporate agreements often lead to misaligned expectations, decision-making deadlocks, and shareholder disputes that can disrupt or even paralyze the business.

We recognise that each business operates within its own unique dynamics and that effective agreements must go beyond standard provisions to address practical realities and future uncertainties.

At Huei Sze & Co, we advise on and draft a range of corporate agreements, including shareholders’ agreements, joint venture agreements, and share sale agreements. In doing so, we place particular emphasis on areas that commonly give rise to disputes, including governance structures, allocation of decision-making powers, reserved matters, funding obligations, and exit mechanisms. We also carefully consider minority protection, transfer restrictions, and dispute resolution frameworks to ensure that the agreement remains workable, balanced, and commercially viable even in challenging circumstances.

Commercial Agreements

Day-to-day business operations rely heavily on contracts. Yet, many disputes arise not from complex issues, but from unclear, incomplete, or overlooked commercial terms.

In practice, the absence of a properly structured agreement often steams parties proceeding on trust, relying on piecemeal correspondence such as emails or messages, hesitating to assert their bargaining position when dealing with larger counterparties, or underestimating the risks involved.

Such arrangements may appear workable at the outset. However, when a dispute arises, these fragmented records often prove difficult to reconcile, as material terms may be incomplete, inconsistent, or open to interpretation. This makes it challenging to ascertain the parties’ true intentions, rights, and obligations, and frequently results in protracted disputes, increased costs, and unnecessary commercial strain.

At Huei Sze & Co, we assist clients in drafting and reviewing commercial agreements with the objective of enabling them to navigate transactions with clarity and confidence across the entire lifecycle – from performance, delivery, payment structures, obligations of parties, and risk allocation to expiry or termination arrangement.

Our experience spans distribution agreements, supply agreements, manufacturing agreements, service agreements, collaboration agreements, agency agreements, marketing agreements, reseller agreements, and so on. We place particular emphasis on ensuring that these agreements are not only legally sound, but also commercially practical and aligned with the realities of day-to-day business operations.

Licensing and Franchise Agreements

Licensing and franchising are key avenues for the commercialisation of intellectual property, allowing businesses to expand their brand and presence  while retaining ownership and control over their intellectual assets. Effective structuring is critical to ensuring that such arrangements achieve their intended commercial objectives without giving rise to unintended legal or regulatory consequences.

At Huei Sze & Co, we draft and advise on both licensing and franchising arrangements, ranging from straightforward trademark licensing to more sophisticated structures such as business model licensing and franchising which may extend to operational systems, know-how, and business processes. In particular, where a licensing arrangement goes beyond the mere grant of trademark rights, careful delineation is required to ensure that it does not inadvertently fall within the ambit of a franchising framework.

Our approach is tailored to each client’s specific needs, business structure, and long-term objectives, ensuring that the arrangement is both commercially effective and legally sound.

Brand and Business Acquisitions

The acquisition of a brand or business extends beyond a mere transfer of ownership. It requires a structured and disciplined process to ensure that the underlying assets, particularly intellectual property, are properly identified, secured, and capable of being effectively transferred. As a preliminary step, comprehensive due diligence is undertaken on the business, its directors, and its intellectual property portfolio to verify ownership, identify any encumbrances or third-party interests, and assess any existing or contingent liabilities that may impact the transaction.

At Huei Sze & Co, we assist our clients in navigating each stage of the transaction with clarity – from the initial evaluation and structuring of the proposed acquisition, to conducting due diligence, negotiating terms, and preparing transaction documents such as share sale agreements, asset purchase agreements, and intellectual property assignments, through to completion and handover. Our approach is measured and detail-oriented, enabling our clients to proceed on a clear and informed basis while safeguarding the long-term value of the business or brand being acquired.

One-to-One Consultations and Group Sessions (Available on Request)

Our founder conducts structured intellectual property talks and sessions tailored to the specific needs of businesses and organisations across different stages of growth. These sessions are designed to provide a practical and structured understanding of how intellectual property operates in the context of a business, including brand development, commercialisation, risk management, and day-to-day operations.

Drawing from our experience in advisory, prosecution, and dispute matters, we focus on translating legal principles into clear and relevant insights. Particular emphasis is placed on equipping businesses with a practical understanding of how to develop trademarks that are capable of protection, use marketing materials responsibly, and implement appropriate protocols when dealing with potential infringement or disputes. We also address internal practices, including the use of disclaimers and safeguards to better protect the business and its team. The scope and depth of each session may be customised. Topics typically covered include:

• Identifying and understanding intellectual property within a business.
• Trademark protection, including how to select brand names that are capable of registration.
• Practical considerations in using marketing materials without infringing third-party rights.
• Trademark application processes in Malaysia and internationally, including an overview of the Madrid System and cost considerations.
• Managing and maintaining an intellectual property portfolio, including strategies to safeguard against infringement.
• Licensing, franchising, and the commercialisation of intellectual property.

Practical approaches to avoiding disputes and managing legal risks in the marketplace.