When a trademark is opposed by a well-known brand, many applicants assume that their application is bound to fail. However, this is not always the case.
Malaysian courts have made it clear that the mere presence of a well-known mark does not automatically prevent the registration of a similar mark. The key question remains whether there is a likelihood of confusion when the marks are considered as a whole.
This principle was clearly illustrated in a recent Malaysian case Ferrari S.p.A. v Sunrise-Mark Sdn Bhd [2025] CLJU 1519 illustrates how courts approach such situations. Ferrari brought legal action against a Malaysian company producing energy drinks, alleging that the wording “Wee Power” and the logo featuring two rearing horses flanking a stylised “W” used on the product resembled Ferrari’s well-known prancing horse trademark.
In assessing the dispute, the High Court reiterated that trademark comparison must be based on the overall impression of the marks as a whole, rather than by isolating individual elements. Ferrari argued that the word “POWER” should be disregarded on the basis that it was disclaimed and therefore non-distinctive. However, the Court did not accept this approach. Instead, it considered the defendant’s mark in its entirety, including the word “WEE POWER”, the stylised “W”, and the depiction of two horses facing each other. When viewed as a whole, the Court found that the overall visual and conceptual impression of the marks was sufficiently different.
The court also considered the commercial context of the parties’ businesses. Ferrari is globally associated with luxury sports cars, whereas the defendant’s product was an energy drink sold in the consumer beverage market. Taking these factors into account, the court concluded that consumers were unlikely to assume that the energy drink was connected with or endorsed by Ferrari.
A similar approach can be observed in a Singapore case Bytedance Ltd v Dol Technology Pte Ltd [2024] SGIPOS 5, where TikTok opposed the registration of the mark “TIKI” in Singapore, arguing that it was confusingly similar to its well-known “TIKTOK” trademark. However, the opposition was unsuccessful. The authority assessed the marks in their entirety and determined that, despite sharing the syllable “Tik”, the marks differed sufficiently in their overall structure, appearance and pronunciation.
These cases highlight an important principle in trademark law which is similarity cannot be assessed by isolating a single word, syllable or element of a mark. Courts and trademark authorities will examine the marks as a whole, taking into account their visual, phonetic and conceptual characteristics, the nature of the goods or services involved, and whether the average consumer is likely to believe that the products originate from the same source.
In view thereof, a trademark opposition raised, especially by a well-known brand, should not be taken as a definitive indication that a trademark application will fail. In practice, many trademark oppositions are triggered by perceived similarities in certain elements of a mark.
Accordingly, businesses faced with trademark opposition proceedings in Malaysia should avoid reacting hastily or dismissing the matter outright. A strategic and well-prepared response, grounded in a proper understanding of the legal principles and commercial context, can significantly influence the outcome of the application.
Should you require professional advice on Trademark Opposition in Malaysia, please contact us Flexly IP for consultation.
