The 3-Year Non-Use Revocation Rule in Malaysia: Section 46 and the “Use It or Lose It” Standard

Malaysia imposes one of the shortest non-use vulnerability periods among major trade mark jurisdictions: just three years. Under Section 46 of the Trademarks Act 2019 (TMA 2019), a registered trade mark that has not been put to genuine use in good faith in Malaysia within three years of the notification of registration — or whose use has been suspended for an uninterrupted three-year period — can be revoked by the High Court on application by an aggrieved person. This comparatively short window, combined with Malaysia’s common law “first-to-use” tradition, creates significant pressure on trade mark owners to use their marks actively or risk losing them.

The Legal Basis: Section 46

Section 46(1) of the TMA 2019 provides that the registration of a trade mark may be revoked by the Court on application by an aggrieved person on any of the following grounds:

• Section 46(1)(a): Within a period of three years following the date of issuance of the notification of registration, the trade mark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use.
• Section 46(1)(b): The use of the trade mark has been suspended for an uninterrupted period of three years, and there are no proper reasons for such non-use.
• Section 46(1)(c): In consequence of the proprietor’s acts or inactivity, the mark has become the common name in the trade for the product or service (genericisation).
• Section 46(1)(d): In consequence of use of the mark by the proprietor or with consent, the mark is liable to mislead the public as to the nature, quality, or geographical origin of the goods or services.

Why Three Years Matters

Most major jurisdictions apply a five-year non-use period — this is the standard across the European Union, the United Kingdom, China, Australia, and many other countries. Malaysia’s three-year rule is significantly shorter and means:

• Faster vulnerability: A mark becomes vulnerable to revocation just three years after registration, giving the proprietor considerably less time to establish commercial operations.
• Greater pressure on portfolio management: Trade mark owners with large portfolios covering multiple goods and services must ensure active use across their registrations or accept the risk of partial or total revocation.
• More effective tool against squatters: The shorter period makes it easier for genuine brand owners to challenge trade mark squatters who register marks without genuine commercial intent.

What Constitutes “Use in Good Faith”?

Malaysian courts follow established common law principles in assessing genuine use. The case of Jost Cranes GmbH & Co KG v Jost Cranes Sdn Bhd laid down the following principles:

• Genuine use is actual, real commercial use: The use must be bona fide and must relate to real commercial activity — not token, artificial, or contrived transactions designed solely to maintain the registration.
• Use on a substantial scale: Following Electrolux Ltd v Electrix Ltd, use must be “real commercial use on a substantial scale.” However, this does not mean the use must be quantitatively large — it must be genuine and consistent with the nature of the goods or market.
• Use in relation to the registered goods or services: The use must relate to the specific goods or services covered by the registration. Use for different goods does not protect the registration.
• Use in Malaysia: The use must occur in the Malaysian market. Export-only use or use exclusively in foreign markets does not satisfy the requirement (although Section 3(2)(c) of the TMA 2019 recognises use in relation to goods to be exported from Malaysia).
• Use by the proprietor or with consent: Use by a licensee, distributor, or other authorised party counts, provided it is with the proprietor’s consent.

Who Can Apply: The “Aggrieved Person” Requirement

Not just anyone can apply for non-use revocation. The applicant must be an “aggrieved person” — a person whose legal interests are adversely affected by the continued registration of the mark. Malaysian case law, including McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741, establishes that an aggrieved person includes:

• A person who has used a mark that is the same as or similar to the registered mark.
• A person who has a genuine and present intention to use such a mark in the near future.
• The applicant must have a legal interest, right, or legitimate expectation that is substantially affected by the presence of the registered mark.

A “mere busybody” with no commercial interest in the mark cannot bring a revocation action.

The Burden and Shifting of Proof

The burden of proof in non-use revocation proceedings operates as follows:

• Initial burden on the applicant: The aggrieved person must establish a prima facie case of non-use. This typically involves showing that the mark does not appear in the marketplace, cannot be found in trade channels, and is not associated with any commercial activity in Malaysia. Market surveys, trade searches, and declarations from industry participants may be used.
• Burden shifts to the proprietor: Once the applicant establishes a prima facie case, the burden shifts to the registered proprietor to demonstrate genuine use during the relevant three-year period. The proprietor must produce evidence of actual commercial use in Malaysia — invoices, distribution records, advertisements, product packaging, import records, and other documentation.

Malaysian courts have noted that relying solely on market surveys to prove non-use is challenging. Additional evidence — such as trade directory searches, mystery shopping results, or declarations from distributors — strengthens the applicant’s case.

The Grace Period and Anti-Avoidance Provisions

Section 46 contains important qualifications:

• Post-three-year use saves the registration: A mark shall not be revoked under Section 46(1)(a) or (b) if the proprietor can show that genuine use commenced or resumed after the three-year period but before the date of the revocation application.
• The three-month anti-avoidance rule: However, any use that occurs within the three months immediately before the date of the revocation application shall be disregarded, unless the proprietor can show that preparations for such use began before the proprietor became aware that a revocation application might be made. This prevents “emergency use” designed solely to forestall a known challenge.

Proper Reasons for Non-Use

A mark will not be revoked if the proprietor can demonstrate proper reasons (legitimate justification) for the non-use. These typically include:

• Import restrictions or trade sanctions preventing the marketing of goods in Malaysia.
• Regulatory barriers — such as pending approval from Malaysian authorities (e.g., pharmaceutical or food safety approvals) that prevent commercial sale.
• Force majeure events beyond the proprietor’s control.

Purely commercial reasons — such as lack of market demand, financial difficulties, or strategic decisions to delay market entry — are generally not accepted as proper justification.

Partial Revocation

Under Section 46(4) of the TMA 2019, where the grounds for revocation exist in respect of only some of the goods or services for which the mark is registered, revocation shall relate to those goods or services only. The Court of Appeal confirmed in a landmark 2024 ruling involving the “Wise” mark that partial revocation is permissible, following Singapore’s more conservative approach: specifications may be narrowed to goods or services actually used, but the court will not rewrite specifications with excessive granularity.

Procedure

Non-use revocation proceedings are brought before the High Court (specifically, the IP-specialised division in Kuala Lumpur). The procedure involves:

• Filing an originating summons supported by affidavit evidence establishing the applicant’s status as an aggrieved person and the prima facie case of non-use.
• The registered proprietor files responding affidavits with evidence of use.
• Possible cross-examination of deponents.
• Court hearing and judgment.

Unlike France or Spain, where the trade mark office now handles revocation administratively, Malaysia’s non-use revocation remains a court-based process. This means higher costs and longer timelines than administrative proceedings, but it also provides full judicial scrutiny of the evidence.

Strategic Recommendations

• Use your marks within three years: The clock starts running from the notification of registration. Plan your commercial launch in Malaysia to ensure genuine use within this period.
• Maintain organised evidence of use: Keep dated records of all commercial activity under your marks in Malaysia — invoices, delivery notes, advertisements, product photographs, import records, and distribution agreements. This is your primary defence.
• Audit your portfolio regularly: Identify registrations covering goods or services you are not actively using. These are vulnerable to partial revocation.
• Use the revocation tool offensively: If a dormant prior mark is blocking your application, a non-use revocation action before the High Court can clear the obstacle. The three-year period makes this a faster path than in five-year jurisdictions.
• Be aware of the three-month rule: Do not assume that starting use immediately before a known revocation challenge will save the registration. Use within the final three months before the application is disregarded unless preparations began before awareness of the threat.

Common Mistakes

• Assuming five years, not three: International brand owners accustomed to the five-year standard in the EU, UK, or China are often surprised by Malaysia’s shorter three-year rule. Adjust your commercial timelines accordingly.
• Relying on token use: A few isolated, artificial transactions will not satisfy the genuine use requirement. Use must be real, commercial, and on a substantial scale relative to the market.
• Failing to prove use in Malaysia: Use in neighbouring countries (Singapore, Thailand, Indonesia) does not protect a Malaysian registration. The use must occur in Malaysia.
• Neglecting partial revocation risk: Even active marks are vulnerable to partial revocation if the registration covers goods or services beyond what is actually used. Register strategically and use broadly.
• Underestimating the “aggrieved person” threshold: As a proprietor, be aware that the applicant must demonstrate a genuine commercial interest. Frivolous applications may be dismissed, but competitors with genuine use or intent are credible challengers.

Key Takeaway

Malaysia’s three-year non-use revocation rule under Section 46 creates one of the tightest “use it or lose it” windows among trade mark jurisdictions. Registered marks that are not put to genuine commercial use in Malaysia within three years of registration — or whose use lapses for three consecutive years — are vulnerable to court-ordered revocation by any aggrieved person. The shorter period, combined with the availability of partial revocation, puts significant pressure on trade mark owners to maintain active use across their registered goods and services. For brand owners entering the Malaysian market, planning for genuine commercial use within three years of registration is not optional — it is a condition of maintaining the registration. For competitors facing blocking marks, the three-year rule provides a powerful and relatively fast tool to clear the register of dormant registrations.