Business Reputation & Passing Off

• What if I never registered my brand as trademark? Can I take action against competitors using my brand? 

Yes. You still have rights under common law if you can prove you have acquired “goodwill and reputation”. However, proving this is more complex and evidence-heavy than enforcing a registered trademark. 

• How do I prove passing off? 

You must prove three elements (often called the Classic Trinity): (1) Your business has Goodwill; (2) The competitor made a False Representation (misleading the public); and (3) You have suffered or are likely to suffer Damage. You may consult our lawyers further on how to prove passing off.  

• Can I stop a competitor copying my packaging? 

Yes, if it misleads consumers into thinking their goods are yours. 

• What remedies are available? 

If successful, the Court can grant an Injunction to stop the competitor, order them to pay Damages (compensation) and order the Delivery Up of infringing goods to be destroyed.  

• Is passing off as strong as trademark registration? 

No. It is harder to prove because you must first prove you own the reputation. Trademark registration is always recommended as it provides prima facie evidence of ownership. 

• What is the “First User” principle?  

Malaysia generally recognizes the rights of the first user of a mark in the course of trade. This means if you used a brand name first (even if you didn’t register it), you may be able to stop a later party who tries to register or use it, provided you can prove your reputation. 

• Can I sue for Passing Off if I already have a Registered Trademark?  

Yes. It is common to plead both Trademark Infringement (under the Act) and Passing Off (under common law) in the same lawsuit. This provides a “double safety net”, if the registration is challenged on a technicality, you can still rely on your market reputation. 

• Does Passing Off protect my business name?  

Yes. While trademarks usually protect brands on goods, Passing Off is very effective for protecting business names, company names and trading styles that may not be registered as trademarks but are well-known to the public. 

• What constitutes “Goodwill”?  

Goodwill is the attractive force that brings in custom. It is not just your reputation, but the value of your brand in the eyes of customers. We help you prove this through sales records, marketing expenditure and customer testimonials.

This article is written by 

Azarith Sofia Binti Aziz
Principal Associate, Low & Partners