Business Reputation & Passing Off
Protecting Goodwill and Market Position
Even without a registered trademark, your business has rights. Malaysia follows the "First User" principle, meaning the first person to use a mark in the course of trade may have superior rights over others. If you have established a reputation, the common law tort of Passing Off allows you to prevent competitors from misleading the public into thinking their goods or services are yours.
While trademark registration provides a statutory monopoly, Passing Off is the primary safety net for unregistered brands, trade dress (packaging) and business get-up. However, enforcing these rights requires strong evidence of your market reputation.
Our Business Reputation & Passing Off Services Include:
- Misrepresentation, trade dress & get-up protection - We advise on protecting the visual appearance of your product or business (packaging, décor, uniforms) against look-alikes that confuse customers.
- Initiating passing off actions in Malaysian courts - We commence legal proceedings to stop unauthorized use and claim damages for the harm done to your business.
- Unfair competition advisory - We help you navigate the fine line between aggressive competition and unlawful business practices that misappropriate your hard-earned goodwill.
- Evidence gathering & litigation strategy - We assist in compiling the necessary proof (sales figures, advertising spend and media coverage) to establish the "Classic Trinity" required by the courts: Goodwill, Misrepresentation and Damage.
- Goodwill protection & brand reputation management - We help you strategize on how to build and document your goodwill from day one, ensuring you have a defensible position if a dispute arises.
FAQs- Common Client Concerns
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.
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.
Yes, if it misleads consumers into thinking their goods are yours.
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.
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Patent
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Copyright
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Industrial Design
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Awards and Recognition
We are proud to be nominated as the top finalists of "SE Asia Law Firm of the Year" and "Malaysia Law Firm of the Year" by ALB (Asian Legal Business) Law Awards 2018 and 2019.
Why Choose Us
We adopt a pragmatic and strategic approach to protecting your market position. We understand that winning a passing off claim requires more than just asserting your rights, it requires proving the "Classic Trinity" of goodwill, misrepresentation and damage . We help you gather the critical evidence needed to build a robust case, ensuring that competitors cannot unfairly ride on your success or confuse your customers.
Reach out today to protect your business reputation.