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What Is Trademark Invalidation and Why Does It Matter?
Trademark invalidation is the process of striking a registered mark off the official register when it should never have been there to begin with. In simple terms, it is a way of “cleaning up” the system, removing marks that are misleading, never used, filed in bad faith, or simply not distinctive enough to function as trademarks.
This matters because a trademark register is not just a record-keeping tool; it is the backbone of brand protection. If the register is filled with marks that block honest businesses or confuse consumers, the value of the system breaks down. Invalidation ensures that only marks which truly deserve protection stay in place, keeping the market fair, competitive, and easier to navigate for both brand owners and the public.
Opposition vs. Invalidation: Key Distinctions in Trademark Practice
When discussing trademark disputes, it is very important to separate opposition and invalidation, as they operate at different stages of the registration process. Opposition takes place before a mark is registered, giving third parties the chance to stop it from ever entering the register. Invalidation, by contrast, is a post-registration remedy that clears marks which should not have been granted protection or no longer meet legal requirements.
| Aspect | Opposition (Pre – Registration) | Invalidation (Post – Registration) |
|---|---|---|
| Procedural Stage | Filed after publication of a trademark application, before registration is granted. | Filed after the mark has been registered and entered on the official register. |
| Purpose | To prevent an application from being registered where it conflicts with legal requirements or earlier rights. | To remove a registered mark that was wrongly accepted or has lost protection due to subsequent circumstances. |
| Legal Standing | Usually available to proprietors of earlier marks, well-known mark owners, or any party with a legitimate interest. | Restricted to an “aggrieved person” — someone who can show that the continued registration causes or is likely to cause damage. |
| Common Grounds | Absolute grounds: non-distinctiveness, descriptiveness, contrary to law/public policy, bad faith. Relative grounds: conflict with earlier marks, likelihood of confusion, dilution of well-known marks. | Non-use: 3 years (Malaysia, Thailand, Philippines); 5 years (Singapore, Vietnam, Indonesia – updated 2024). Bad faith: registrations made without genuine intent to use. Absolute grounds: misleading, deceptive, contrary to law. Relative grounds: conflicting with earlier rights overlooked at examination. |
| Decision Making Authority | IP Offices in most SEA countries: MyIPO – Malaysia IPOS – Singapore IPOPHL – Philippines NOIP – Vietnam | IP Offices Singapore, Philippines, Vietnam Courts Indonesia, Malaysia |
| Outcome | If upheld, the application is refused and never proceeds to registration. | If upheld, the registration is declared invalid (often with retroactive effect to the date of registration) and removed from the register. |
Latest Update: 11 September 2025
Why Invalidation Matters in Southeast Asia’s First-to-File System
In Southeast Asia, trademark rights generally belong to the first person who files an application, not the first person who uses the mark in business. While this makes the process straightforward, it also creates risks: opportunistic parties may register well-known brands before the rightful owner, marks may sit unused on the register, or bad-faith actors may file purely to block competitors. For brand owners, invalidation is often the only remedy to clear these obstacles and reclaim their rights.
Grounds for Trademark Invalidation in Southeast Asia
When it comes to removing a registered trademark, the reasons are fairly consistent across Southeast Asia, but each country applies them slightly differently. Broadly, these grounds fall into four main categories: absolute, relative, non-use, and bad faith. The table below sets out what these mean in practice.
| Ground | Explanation | SEA Application (General Practice) |
|---|---|---|
| Absolute Grounds | Marks that should never have been registered: descriptive, generic, misleading, immoral, or against public policy. | Applicable across all SEA jurisdictions. E.g., “Sweet Sugar” for sugar (descriptive) would be invalid; offensive or deceptive marks are barred. |
| Relative Grounds | Marks that conflict with earlier registered or well-known marks, creating likelihood of confusion. | All five apply this. Assessed by similarity (visual/phonetic/conceptual) and overlap of goods/services. |
| Non-Use | Failure to put a registered mark to genuine commercial use within statutory period. | 3 years: Malaysia, Philippines. 5 years: Singapore, Vietnam, Indonesia (extended in 2024). |
| Bad Faith | Filing without intent to use, or to block/sell back to legitimate brand owners. | Interestingly accepted. Singapore, Vietnam, and Malaysia expressly recognise; Indonesian and Philippine courts/authorities also consider bad faith |
Last Update: 11th September 2025
Procedural Avenues for Trademark Invalidation in Southeast Asia
Challenging a registered trademark is not a one-size-fits-all process in Southeast Asia. Depending on the country, brand owners may need to go through the IP Office, the courts, or in some cases, both. The choice of forum often affects not only the speed and cost of proceedings but also the range of remedies available. The table below outlines the main procedural routes in the region.
| Procedural Avenue | Description | Examples in SEA | Key Considerations |
|---|---|---|---|
| IP Office | A petition or application is filed directly with the national IP Office, which has authority to hear invalidation cases. | Singapore – IPOS Philippines IPOPHL Vietnam – NOIP | Generally faster and less costly. Limited to registry actions (removal of mark). No damages awarded. |
| Court | Invalidation filed directly with the courts, which have authority to revoke registrations. | Malaysia – High Court Indonesia – Commercial Courts | Slower and more expensive, but courts may grant broader remedies such as damages, injunctions, and declaratory relief. |
Last Update: 11th September 2025
Step-by-Step Invalidation Process in Southeast Asia
In Southeast Asia, the trademark invalidation process generally follows a structured sequence to ensure fairness for both parties. While the exact steps vary by country, challengers and registrants typically go through filing, notification, evidence exchange, hearings, decisions, and potential appeals. The table below summarizes this general process and highlights key considerations across the region.
| Step | Description | Notes / Jurisdictional Considerations |
|---|---|---|
| Filing the petition | Challenger submits a petition or complaint to the competent authority. | Singapore, Philippines, Vietnam: filed with IP Office (IPOS, IPOPHL, NOIP). Malaysia, Indonesia: filed with the courts (High Court, Commercial Courts), though administrative filings may be required first in Malaysia. |
| Notification to Registrant | The trademark owner is formally notified and given the chance to respond. | All five countries ensure due process; timelines and methods differ (written notice in Vietnam, Singapore; formal court service in Malaysia, Indonesia; IPOPHL issues electronic notifications in Philippines). |
| Exchange of Evidence | Challenger presents proof of non-use, bad faith, or other invalidation grounds; registrant may provide evidence of genuine use or justification. | Vietnam, Indonesia: notarized documents or certified translations often required. Singapore, Malaysia, Philippines: standard documentary evidence accepted; oral affidavits may be submitted. |
| Hearing or Written Submissions | Case may be decided based on written arguments, oral hearings, or a combination. | Singapore, Philippines: often decided on written submissions. Malaysia, Indonesia, Vietnam: hearings or oral arguments are common. |
| Decision Issued | Authority rules on whether the mark remains registered or is removed from the register. | Singapore, Philippines, Vietnam: decision issued by IP Office; may be appealed. Malaysia, Indonesia: court issues decision directly. Invalidation often has retroactive effect in all five countries. |
| Appeal | Decision may be appealed to higher courts or specialist IP tribunals. | Singapore: High Court; Philippines: Court of Appeals; Vietnam: People’s Court; Malaysia: Court of Appeal/High Court; Indonesia: Supreme Court (if Commercial Court decision). Scope varies by jurisdiction (points of law vs. full reconsideration). |
Last Update: 11th September 2025
Country-by-Country Overview of Trademark Invalidation Procedures in Southeast Asia
Trademark invalidation rules in Southeast Asia vary from country to country. While the general principles, such as non-use, bad faith, or registrability issues — are similar, the authorities, timelines, and procedures differ. The table below summarizes key information for Malaysia, Singapore, Philippines, Vietnam, and Indonesia, helping brand owners understand what to expect in each jurisdiction.
| Country | Governing Law | Competent Authority | Non-Use Period | Procedural Highlights | Practical Notes |
|---|---|---|---|---|---|
| Malaysia | Trademarks Act 2019 | Registrar of Trademarks (administrative) or High Court (judicial) | 3 years | Petition can be filed administratively; High Court handles judicial confirmation. | Only an “aggrieved person” can file; must demonstrate impact on business |
| Singapore | Trade Marks Act 1998 (2020 Rev. Ed.) | Intellectual Property Office of Singapore (IPOS, administrative) | 5 years | Online filing → counterstatement → evidence rounds → hearing | Distinguish invalidation (registrability) vs revocation (post-registration non-use) |
| Philippines | Intellectual Property Code of the Philippines (IP Code) | IPOPHL – Bureau of Legal Affairs (administrative) | 3 years (proof of use required in 3rd and 5th year declarations) | Petition → registrant’s answer → pre-trial conference → hearing | Mediation encouraged; evidence of genuine business impact strengthens case |
| Vietnam | the Law on Intellectual Property (No. 50/2005/QH11) | Vietnam IP Office (NOIP, administrative) | 5 years | Petition with supporting evidence → NOIP decision → appealable to court | Notarized translations often required; procedural compliance is critical |
| Indonesia | Law No. 20 of 2016 concerning Trademarks and Geographical Indications | Commercial Courts | 5 years (extended from 3 years in 2024, Constitutional Court) | Lawsuit filed in Commercial Court → strict procedural timelines | Judicial process more formal and costly; strong factual evidence needed |
Last Update: 11th September 2025
Evidence Requirements for Trademark Invalidation Across Southeast Asia
In trademark invalidation proceedings, the type and form of evidence can determine the outcome. While most countries in SEA accept a wide range of documents, each jurisdiction has its own rules regarding translations, notarization, and proof of genuine use. The table below summarizes the key evidentiary requirements in five major SEA countries.
| Country | Accepted Evidence (Bearing the mark) | Burden of Proof | Translations / Localization | Notarisation / Legalisation | Practical Notes |
|---|---|---|---|---|---|
| Malaysia | Invoices, receipts, product labels, advertisements, contracts, distributor agreements, affidavits, or others that show the use of the specific mark | Challenger proves non-use; registrant must show genuine use of the mark. | English or Malay; translations if in another language. | Notarisation required for statutory declarations and foreign documents; legalization needed for foreign evidence. | Evidence must demonstrate actual use in Malaysia; generic business documents without the mark are insufficient. |
| Singapore | Sales invoices, advertising, product packaging, website screenshots, contracts explicitly or others that show the use of the specific mark. | Challenger proves non-use; registrant proves commercial use in Singapore. | English; foreign documents require certified translations. | Legalisation usually required for foreign documents. | Only evidence clearly bearing the subject mark is accepted; generic business activity is insufficient. |
| Philippines | Receipts, promotional materials, advertisements, contracts, affidavits, distribution documents or others that show the use of the specific mark. | Challenger proves non-use; registrant demonstrates genuine use | English or Filipino; translations if in another language | Notarisation/certification may be required. | IPOPHL emphasizes clear link to the subject mark; third-party confirmations strengthen cases. |
| Vietnam | Invoices, contracts, advertising, website screenshots, affidavits, or others, labelling with the specific mark. | Challenger must prove non-use; registrant must show genuine use of the mark | Must be in Vietnamese; notarized translations required for foreign docs | Notarisation and legalization mandatory for foreign documents. | Only evidence directly showing the challenged mark counts; generic company documents are insufficient. |
| Indonesia | Sales records, advertisements, contracts, screenshots, social media platforms or others that show the use of the specific mark. | Challenger carries burden; registrant must prove use in Indonesia | Bahasa Indonesia; foreign documents must be translated. | Notarisation and legalization of foreign documents are required. | Courts require clear demonstration that the subject mark was actually used; general business records not enough. |
Last Update: 11th September 2025
At Pintas IP Group, we’ve been helping IP owners protect and enforce their trademark rights across Southeast Asia for over 20 years. Whether you’re dealing with potential infringement or looking to strengthen your brand’s legal protection in the region, our team is here to guide you with local expertise and proven results.
Schedule a complimentary consultation today and let us help you take the next step in securing your intellectual property.