See the positions. Plan the response.

A trademark opposition is a formal challenge from another party after your application is published in the gazette. They believe it should not be registered.

It is not a final rejection. You can respond before the Registrar decides whether the trademark can be registered.

Cathca reviews the notice, checks the deadlines and prepares the response with you.

No. They come from different sources and happen at different stages.

• A refusal comes from the Trademark Office while it examines your application.
• An opposition comes from another party after the application is published in the gazette.

Each has its own deadlines and response process.

Anyone with valid legal grounds can oppose. They do not have to own a registered trademark.

Under sections 34 and 35 of the Trademarks Act 2019, competitors, other brand owners and members of the public can file an opposition if they have those grounds.

No. Your application is still pending. The opposition must be resolved before registration can continue.

Cathca reviews the opponent’s reasons and explains the response and evidence needed to defend your application.

No. A Notice of Opposition starts a case before the Registrar of Trademarks, rather than a court lawsuit.

It still follows legal rules and strict deadlines. The Registrar’s decision can later be appealed to the High Court. Cathca explains the notice and handles the response stages.

The trademark gazette is the Intellectual Property Official Journal. It publishes accepted trademark applications.

Publication starts a two-month period when another party can oppose the application. If no one opposes, the trademark can proceed to registration.

Send Cathca the complete Notice of Opposition, your application number and related correspondence as soon as you receive them.

We check the reasons and deadlines, explain what evidence is needed and prepare your response. An opposition comes from another party, so the process differs from replying to a Trademark Office refusal.

You have two months from receiving the Notice of Opposition to file a Counter-Statement, your formal reply to the opponent.

The Registrar may grant up to six months of extra time if there is a good reason. Apply before the original deadline; a late request may be refused. Cathca’s extension charge starts from RM500 a month.

Send Cathca the notice promptly so we can confirm the exact deadline and plan the reply.

Your application is normally treated as withdrawn for the goods or services being opposed, unless the Registrar directs otherwise. Section 35(4) of the Trademarks Act 2019 sets out this consequence.

You lose the fees already paid. Continuing to use the brand may also expose you to legal action from the opponent.

Cathca can review the notice and explain your options before the reply deadline.

An opposition has these main stages:

1. The opponent files a Notice of Opposition (TMD1) within two months of gazette publication.
2. You file a Counter-Statement (TMD6) within two months of receiving the notice.
3. The opponent files evidence within two months of receiving your Counter-Statement.
4. You file evidence within two months of receiving the opponent’s evidence.
5. The opponent may file evidence in reply within two months of receiving your evidence.
6. Both sides file written submissions on the Registrar’s timetable. The Registrar then gives a written decision.

How long the case takes depends on whether the opponent continues through each stage. Cathca handles the filings, evidence and deadlines and keeps you informed.

No. The Counter-Statement is your reply to the opponent’s reasons. You file evidence later, during the evidence stage.

Cathca explains what to collect and when it must be filed.

Evidence is usually filed in a statutory declaration with supporting documents. Depending on the reasons for opposition, it may include:

• Invoices, packaging, advertisements and photographs showing use of your trademark.
• Sales figures and market share.
• Records of when you first used the trademark in Malaysia.
• Surveys showing that customers recognise the brand.
• Evidence that customers have come to identify the brand with your business through its use.
• Evidence that the opponent has not used their trademark, where their grounds depend on their own use.

Cathca gives you a checklist for your case and helps you organise the evidence.

Yes. An opposition can sometimes be settled through negotiation.

The parties may agree to limit the goods or services, change a minor part of the trademark where allowed, or set terms for using both brands. If the agreement removes the reasons for opposition, the opponent can withdraw it.

The deadlines continue while you negotiate. Cathca advises on settlement and keeps the required filings on schedule.

A coexistence agreement sets out how two parties can use their trademarks without conflict.

It usually limits where the brands can be used, the goods or services covered, or how the brands are presented. Cathca then informs the Trademark Office and handles the steps needed to resolve the opposition.

It depends on which rights the opponent relies on.

• If their case depends on earlier use, evidence that they have not used the trademark can weaken that argument.
• If their registered trademark has not been used in Malaysia for three years or more, it may qualify for cancellation for non-use under section 46 of the Trademarks Act 2019. This needs a separate High Court application. If successful, it may remove the basis of the opposition.

Cathca checks the notice and evidence to see which option may apply.

Cathca charges RM4,500 to prepare, file and serve the Counter-Statement.

The cost after that depends on whether the opponent continues. If they do not file evidence, their opposition is treated as withdrawn and you succeed without further cost.

If they continue, we quote for each later stage before starting it.

An opposition does not itself stop you using the brand. It decides whether the trademark can be registered.

But the brand is not registered yet. If the opponent has earlier rights, they may still bring an infringement or passing-off claim. Cathca can check that risk while handling the opposition.

The Malaysian process and your reply deadlines stay the same.

An overseas opponent must appoint a registered Malaysian trademark agent to act and receive documents for them. Cathca handles your response through the Malaysian process.

Yes, if you live in Malaysia or mainly run your business here. You can file your own Counter-Statement.

The reply must answer the legal grounds and fit the later evidence stages. Missing a required step or deadline can cost you the application.

Cathca prepares the reply, helps with evidence and manages the deadlines, including when the opponent has professional representation.