Overcoming Conflicts: Consent Letters and Honest Concurrent Use in Malaysia (Sections 24(7) and 25)

When MyIPO cites an earlier conflicting mark under Section 24 of the Trademarks Act 2019, the applicant’s first instinct is often to argue that the marks are sufficiently different. But when the marks are genuinely similar, two practical mechanisms can overcome the citation without requiring the applicant to abandon the application or redesign the mark: consent from the earlier rights holder under Section 24(7), and honest concurrent use under Section 25. These provisions recognise that trade mark coexistence is sometimes commercially sensible and legally permissible, provided the public interest is protected.

Mechanism 1: Consent Under Section 24(7)

The Legal Basis

Section 24(7) of the TMA 2019 provides that the Registrar, when considering whether to refuse registration on relative grounds, shall take into account if the proprietor of the earlier trade mark or earlier right consents to the registration in the prescribed manner. The Registrar must also consider the interest of the public and the likelihood of confusion.

What a Consent Letter Must Contain

While the TMA 2019 does not prescribe a detailed format for consent letters, Malaysian practice requires the letter to:

• Be issued by or on behalf of the registered proprietor (or applicant) of the cited earlier mark.
• Clearly identify the earlier mark, its registration or application number, and the goods or services covered.
• Clearly identify the applicant’s mark, its application number, and the goods or services sought.
• State unequivocally that the proprietor of the earlier mark consents to the registration of the applicant’s mark.
• Be signed by an authorised representative of the earlier mark proprietor, with evidence of authority if not signed by the proprietor directly.

Consent Is Not Automatically Conclusive

Unlike some jurisdictions where consent effectively ends the inquiry, in Malaysia consent is a factor the Registrar considers but is not necessarily determinative. The Registrar retains discretion to refuse registration where the marks are so similar, and the goods so closely related, that public confusion remains a genuine concern — even with the earlier proprietor’s consent. In practice, however, a well-drafted consent letter is highly persuasive and will overcome most Section 24 citations, particularly where the goods or services can be distinguished or where the parties have agreed on limitations to avoid overlap.

Practical Tips for Obtaining Consent

• Approach the cited proprietor early: Do not wait until the response deadline is imminent. Negotiating consent takes time, and the cited proprietor may have conditions.
• Consider a coexistence agreement: A broader coexistence agreement that governs the parties’ respective use of their marks (territorial scope, goods limitations, visual differentiation) provides the framework for a consent letter and reduces the risk of future disputes.
• Include limitations if necessary: If the marks are highly similar, the consent letter may be more persuasive if accompanied by an undertaking that the applicant will limit its goods or services, use the mark in a particular form, or differentiate its trade channels.
• Be prepared to explain the commercial context: MyIPO may be more receptive to consent where the parties operate in different market segments, target different consumers, or have a commercial relationship (e.g., related companies, licensing arrangements).

Mechanism 2: Honest Concurrent Use Under Section 25

The Legal Basis

Section 25(1) of the TMA 2019 provides that nothing in Section 24 shall prevent the registration of a trade mark where the Registrar or the Court is satisfied that:

• Section 25(1)(a): There has been an honest concurrent use of the trade mark and the earlier trade mark or other earlier right; or
• Section 25(1)(b): By reason of other special circumstances, it is proper for the trade mark to be registered.

Registration under Section 25 may be subject to such conditions, amendments, modifications, or limitations as the Registrar or the Court thinks fit to impose.

What “Honest Concurrent Use” Requires

The applicant must demonstrate that both marks have been used concurrently in the Malaysian marketplace for a significant period, and that this concurrent use has been honest — that is, the applicant adopted the mark in good faith, without knowledge of the earlier mark or without intent to create confusion, and the marketplace has accommodated both marks without material consumer deception.

Key elements that the Registrar or Court will consider include:

• Duration of concurrent use: Both marks must have been used in Malaysia for a substantial period. The longer the concurrent use, the stronger the case.
• Honesty of adoption: The applicant must show that it adopted its mark independently and in good faith, not in an attempt to trade on the earlier mark’s reputation.
• Absence of actual confusion: Evidence that the marks have coexisted in the marketplace without generating consumer complaints, misdirected correspondence, or other indicia of actual confusion is highly persuasive.
• Market differentiation: Differences in trade channels, geographic markets within Malaysia, pricing, or target demographics that have facilitated peaceful coexistence.
• Nature and extent of use: Both parties must have made genuine commercial use — not token or nominal use.

The “Other Special Circumstances” Exception

Section 25(1)(b) provides a broader safety valve: even where honest concurrent use cannot be established, the Registrar or Court may permit registration if other special circumstances make it proper to do so. This is a discretionary power that allows the Registrar to take into account facts that do not fit neatly into the honest concurrent use analysis, such as corporate reorganisations, historical use by related entities, or unique market circumstances.

Evidence Required

Applications under Section 25 require substantial evidence, typically submitted by way of a statutory declaration. The evidence should include:

• A detailed chronology of the applicant’s use of the mark in Malaysia, with supporting documentation (invoices, advertisements, product packaging, distribution records).
• Evidence of the earlier mark’s presence in the market and the applicant’s knowledge (or lack of knowledge) of the earlier mark at the time of adoption.
• Evidence of the absence of actual confusion (e.g., no consumer complaints, no misdirected inquiries, no evidence of market confusion).
• Any coexistence history, including prior correspondence between the parties.

Protection Against Invalidation

Importantly, Section 47(5) of the TMA 2019 provides that where a trade mark has been registered on the ground of honest concurrent use under Section 25, its registration may not be declared invalid under Section 47(3) unless the Registrar or the Court is satisfied that in fact there had been no honest concurrent use. This gives marks registered under the honest concurrent use exception a degree of protection against post-registration invalidation challenges.

Choosing Between Consent and Honest Concurrent Use

The choice between these two mechanisms depends on the specific circumstances:

• Use consent when: The cited proprietor is cooperative, the marks can coexist with appropriate limitations, and a commercial relationship (or at least a neutral relationship) exists between the parties. Consent is faster and simpler.
• Use honest concurrent use when: The cited proprietor is uncooperative or cannot be contacted, the applicant has a strong history of independent use in Malaysia, and there is evidence of peaceful marketplace coexistence.
• Use both when possible: There is no prohibition against submitting both a consent letter and evidence of honest concurrent use. This provides the strongest possible case.

Strategic Recommendations

• Negotiate consent proactively: If a pre-filing search reveals a potentially conflicting mark, consider approaching the proprietor for consent before filing. This avoids the delay and cost of responding to a provisional refusal.
• Document your use history: If you have been using your mark in Malaysia, maintain organised records of use from the earliest date. This evidence is essential for any honest concurrent use argument.
• Be prepared for conditions: Registration under Section 25 may be granted subject to disclaimers, limitations on goods or services, or other conditions. Accept reasonable conditions that still provide meaningful protection.
• Consider the appeal route: If the Registrar refuses registration despite consent or evidence of honest concurrent use, appeal to the High Court under Section 25. The Court has the same power as the Registrar to permit registration under honest concurrent use or special circumstances.

Common Mistakes

• Assuming consent always works: MyIPO retains discretion to refuse even with consent. The stronger the similarity and overlap, the more likely the Registrar will require additional justification.
• Providing a vague consent letter: The consent must clearly identify both marks, their respective registrations or applications, and the goods or services. Ambiguous or generic consents are less persuasive.
• Claiming honest concurrent use without evidence: Assertions without documentary support will not satisfy the Registrar. The statutory declaration must be backed by invoices, advertisements, and other contemporaneous records.
• Ignoring the “honesty” requirement: If the applicant adopted its mark with knowledge of the earlier mark and an intent to free-ride on its reputation, honest concurrent use will fail. The test requires genuine independence.
• Forgetting conditions may be imposed: Registration under Section 25 is often conditional. Review any proposed conditions carefully to ensure they do not unacceptably restrict your commercial use.

Key Takeaway

Malaysia’s Trademarks Act 2019 provides two practical mechanisms for overcoming a blocking citation from MyIPO: consent from the earlier rights holder under Section 24(7), and honest concurrent use under Section 25. Consent is the faster and more commonly used route, but it is not automatically conclusive — the Registrar considers public interest and the likelihood of confusion. Honest concurrent use provides an alternative for applicants who cannot obtain consent but have an independent history of good-faith use in Malaysia. Both mechanisms require preparation: well-drafted consent letters or well-documented statutory declarations with supporting evidence. For applicants facing a Section 24 citation, understanding these tools and deploying them effectively is often the difference between registration and abandonment.