Relative Grounds and Likelihood of Confusion in Malaysia: How MyIPO Applies Section 24

Unlike many jurisdictions where the trade mark office examines only absolute grounds ex officio, Malaysia’s MyIPO actively searches for and cites conflicting prior marks during substantive examination. Under Section 24 of the Trademarks Act 2019 (TMA 2019), the Registrar examines applications against earlier registered and pending trade marks, well-known marks, and even unregistered rights. When a conflict is identified, the Registrar issues a provisional refusal on relative grounds. The likelihood of confusion assessment follows principles deeply rooted in common law, including the “imperfect recollection” test that recognises consumers rarely compare marks side by side.

The Legal Framework: Section 24

Section 24 of the TMA 2019 sets out the relative grounds for refusal of registration. The key provisions are:

• Section 24(1): A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services are identical.
• Section 24(2): A trade mark shall not be registered where there exists a likelihood of confusion on the part of the public — either because the mark is identical to an earlier mark and covers similar goods or services, or because the mark is similar to an earlier mark and covers identical or similar goods or services.
• Section 24(3): The Registrar shall refuse registration of a mark that is identical or similar to a well-known trade mark — whether registered or unregistered in Malaysia — if it is to be registered for identical goods (Section 24(3)(a)), or for non-identical goods where use would indicate a connection, create confusion, and likely damage the well-known mark proprietor’s interests (Section 24(3)(b)).
• Section 24(4): The Registrar shall refuse registration if the mark’s use in Malaysia is prevented by any rule of law protecting an unregistered trade mark (passing off) or any other earlier right, including under the Copyright Act 1987 or the Industrial Designs Act 1996.

MyIPO’s Ex Officio Search

Under Section 29 of the TMA 2019, the Registrar examines whether a trade mark application satisfies all registration requirements. For this purpose, the Registrar conducts a search of earlier trade marks to determine registrability. This is a proactive, ex officio search — the Registrar does not wait for an opposition to be filed.

The search covers:

• The Trade Mark Register: All registered and pending Malaysian trade marks maintained by MyIPO and accessible through its IP Online system.
• Well-known marks: Both registered and unregistered marks recognised as well-known in Malaysia under Section 76 of the TMA 2019.
• International registrations designating Malaysia: Trade marks registered under the Madrid Protocol that designate Malaysia.

If the search identifies a potentially conflicting earlier mark, the Registrar issues a provisional refusal citing the specific earlier mark(s) and the grounds of objection. The applicant then has one opportunity to respond with a written reply, a request for an ex parte hearing, or both.

The “Imperfect Recollection” Test

Malaysian courts and MyIPO examiners assess likelihood of confusion using the well-established common law principle of imperfect recollection. This principle recognises that consumers do not typically encounter competing marks side by side. Instead, a consumer retains only a general, imperfect memory of a mark seen or heard previously, and may be confused when encountering a similar mark later.

The test asks: would an average consumer with an imperfect recollection of the earlier mark be likely to be confused or deceived by the later mark? This is not a side-by-side comparison of the two marks in detail, but an assessment of the overall impression each mark leaves in the mind of the consumer.

The Malaysian courts have consistently applied this principle. In Rolls-Royce Plc & Anor v Saujana Hotel Sdn Bhd [2019] MLJU 550, the High Court assessed whether the marks were confusingly similar “even when viewed through imperfect recollection,” ultimately finding no confusion because the marks conveyed different overall impressions despite operating in arguably related fields.

Factors in the Confusion Assessment

MyIPO and Malaysian courts consider the following factors when assessing likelihood of confusion:

Visual Similarity

The overall visual impression of the marks, including: the length and structure of words, the arrangement and sequence of letters, shared letter groups, the presence or absence of figurative elements, and the general layout. The beginning of a word mark often carries particular significance, as consumers tend to focus on the first part of the mark.

Phonetic (Aural) Similarity

How the marks sound when spoken aloud. This is particularly important in Malaysia’s multilingual environment, where marks may be pronounced differently in Malay, English, Chinese dialects, or Tamil. Phonetic similarity carries significant weight for goods commonly requested orally, such as food, beverages, and everyday consumer products.

Conceptual Similarity

Whether the marks convey the same or a similar idea or meaning. Two marks that look and sound different may still create confusion if they evoke the same concept. Conversely, a clear conceptual difference can help distinguish marks that share visual or phonetic elements.

Goods and Services Similarity

The nature, purpose, and channels of trade of the respective goods or services. Goods in the same Nice Classification class are not automatically similar, and goods in different classes may be found similar if they share channels of distribution, target the same consumers, or are complementary. The Malaysian courts consider the trade channels through which goods reach consumers as a significant factor.

Distinctiveness of the Earlier Mark

A highly distinctive or well-known earlier mark enjoys a broader scope of protection. Confusion is more readily found when the earlier mark has strong inherent or acquired distinctiveness.

The Relevant Consumer

The assessment is based on the perception of the average consumer of the goods or services in question. For everyday, low-cost consumer goods, the consumer is assumed to exercise a lower level of attention, making confusion more likely. For specialised, expensive, or professional goods, the consumer is assumed to be more discerning.

Section 24(7): The Consent Mechanism

Section 24(7) provides that the Registrar may register a trade mark that would otherwise be refused on relative grounds if the proprietor of the earlier trade mark or earlier right consents to the registration in the prescribed manner. The Registrar must take into account the interest of the public and the likelihood of confusion. This means consent is not automatically conclusive — the Registrar retains discretion where public confusion remains a genuine concern.

Responding to a Section 24 Citation

When MyIPO cites an earlier mark under Section 24, the applicant’s response options include:

• Written arguments: Distinguishing the marks on visual, phonetic, and conceptual grounds, and demonstrating that the goods or services are not similar.
• Consent letter: Obtaining written consent from the proprietor of the cited mark (discussed further in the article on overcoming conflicts).
• Evidence of honest concurrent use: Demonstrating that both marks have been used concurrently in Malaysia without actual confusion (Section 25).
• Ex parte hearing: Requesting a hearing to present arguments directly to the Examiner.

Strategic Recommendations

• Conduct a comprehensive search before filing: MyIPO conducts its own search, but pre-filing clearance allows you to identify potential conflicts and adjust your strategy before investing in the application.
• Apply the imperfect recollection test in your risk analysis: Do not compare marks side by side. Consider the overall impression each mark leaves in a consumer’s imperfect memory.
• Consider all three dimensions of similarity: Visual, phonetic, and conceptual similarity are all relevant. Strength in one dimension can overcome differences in others.
• Assess trade channels carefully: Malaysian courts consider the channels through which goods reach consumers. Different trade channels can reduce the likelihood of confusion even for similar marks.
• Prepare your response strategy early: The applicant has only one opportunity to respond to a provisional refusal. Identify whether arguments, consent, or honest concurrent use is the strongest path before responding.

Common Mistakes

• Ignoring MyIPO’s ex officio search: Unlike jurisdictions where the office examines only absolute grounds, MyIPO actively searches for and cites conflicting marks. A clean absolute grounds assessment does not guarantee registration.
• Comparing marks side by side: The imperfect recollection test requires assessing the overall impression each mark leaves in memory, not a detailed point-by-point comparison.
• Assuming Nice Classification determines similarity: Goods in different classes may be found similar if they share trade channels, target consumers, or complementary functions.
• Neglecting the multilingual context: Malaysia’s multilingual consumer base means marks must be assessed for phonetic similarity across Malay, English, Chinese, and Tamil pronunciations.
• Treating consent as automatically sufficient: While consent letters are influential, the Registrar retains discretion to refuse registration where public confusion remains a genuine concern.

Key Takeaway

Malaysia’s trade mark examination system is more interventionist than many applicants expect. MyIPO conducts ex officio searches against the Register and will cite conflicting earlier marks under Section 24 without waiting for an opposition. The likelihood of confusion assessment follows common law principles, centred on the imperfect recollection test and a global assessment of visual, phonetic, and conceptual similarity in the context of the goods, trade channels, and the relevant Malaysian consumer. For applicants, understanding that MyIPO actively polices relative grounds — and preparing responses that address the specific factors the Examiner considers — is essential to navigating the Malaysian registration process successfully.