Notice Of Trademark Infringement Template for Malaysia

When you discover unauthorized use of your trademark in Malaysia, a Notice of Trademark Infringement serves as your first line of defense under the Trademarks Act 2019. This formal document establishes your legal position, documents the infringement, and provides the alleged infringer with an opportunity to resolve the matter before you pursue litigation. Understanding how to properly draft and serve this notice is crucial for protecting your intellectual property rights in Malaysia.

When do you need this document?

You need a Notice of Trademark Infringement when you discover someone using your registered trademark without authorization in Malaysia. This includes situations where competitors are using identical or confusingly similar marks on their products or services, online marketplaces displaying counterfeit goods bearing your trademark, or businesses operating under names that infringe your registered mark. The notice is also necessary when distributors or retailers continue selling infringing products after you've become aware of the violation. Additionally, you should send this notice when domain names incorporate your trademark in bad faith, or when advertising materials misuse your protected marks. Acting promptly upon discovery of infringement strengthens your legal position and demonstrates your commitment to protecting your trademark rights.

Key legal considerations

Your Notice of Trademark Infringement must clearly establish your ownership rights by referencing specific trademark registration numbers and classes under the Trademarks Act 2019. Include detailed evidence of the infringement, such as photographs, screenshots, or product samples that demonstrate unauthorized use. The notice should specify exact remedial actions required, including immediate cessation of infringing activities, destruction of infringing materials, and provision of sales records. Consider including a reasonable deadline for compliance, typically 14 to 30 days, which courts view favorably as providing fair opportunity to resolve the matter. Be aware that sending an unjustified notice can result in groundless threats proceedings under Section 74 of the Trademarks Act 2019, so ensure your claims are well-founded. Document all correspondence as it may serve as evidence in subsequent legal proceedings or enforcement actions with Malaysian authorities.

Legal requirements in Malaysia

Under Malaysian law, your notice must comply with the Trademarks Regulations 2019 and include specific mandatory elements. You must provide complete details of your trademark registration, including registration numbers, filing dates, and protected classes. The notice should identify the alleged infringer accurately and describe the infringing activities with sufficient detail for the recipient to understand the complaint. Include your complete contact information as the trademark owner or authorized representative. If you're acting through legal representatives, ensure proper authorization is documented. Consider serving the notice through registered post or courier service to establish proof of delivery, which may be required in subsequent legal proceedings. The notice should reference relevant provisions of the Trademarks Act 2019 and may need to be copied to the Intellectual Property Office of Malaysia (MyIPO) depending on the circumstances. Ensure compliance with any sector-specific regulations that may apply to your particular industry or trademark category.