Trademarks are not placeholders.
In Transferwise Ltd v Public Bank Bhd, the Court of Appeal clarified how partial revocation for non-use operates in Malaysia. A registered proprietor cannot safely keep a broad specification unless the mark is genuinely used for those services, or there are proper reasons for non-use.
Case snapshot
Transferwise Ltd v Public Bank Bhd [2024] MLJU 2866 was decided by the Court of Appeal and concerns Section 46 of the Trademarks Act 2019.
Transferwise Ltd, now associated with the “Wise” brand, applied to partially revoke Public Bank Berhad’s trademark registration on the ground of non-use. Wise argued that Public Bank’s mark had only been used in relation to children’s savings accounts, and not across the broader range of services covered by the registration.
The commercial problem
Can a registered owner keep a wide list of services if the evidence only shows genuine use for a narrower banking product? The Court of Appeal’s answer was commercially significant: the registration may survive, but only for a fair description of the services actually used.
The legal framework
Section 46(1) of the Trademarks Act 2019 allows a trademark registration to be revoked where the mark has not been put to genuine use in Malaysia for the relevant goods or services, and there are no proper reasons for non-use.
Section 46(4) is equally important. Where non-use affects only some of the registered goods or services, the revocation may be limited to those goods or services only.
Non-use revocation
A mark may be revoked if it has not been used in good faith in Malaysia within the relevant three-year period, or if such use has been suspended for an uninterrupted three-year period.
Partial revocation
If the problem concerns only part of the specification, the Court may remove only the unused goods or services instead of revoking the entire registration.
The issues before the Court
1. Was Wise an aggrieved person?
Wise was not treated as an aggrieved person because the Malaysian services were provided by its subsidiary, Wise Payments Malaysia Sdn Bhd.
Wise qualified as an aggrieved person. Use by its subsidiary and licensed third party could accrue to Wise, and Wise had shown a genuine intention to use the WISE marks in Malaysia.
2. Was there sufficient non-use evidence?
Use for children’s savings accounts was treated as sufficient to support the broader services in the registration.
Wise had established a prima facie case that the mark was not used for services beyond children’s savings accounts. A mere stated intention to use was insufficient.
3. How far should the specification be cut down?
The services in the banking and financial sector were not treated as easily severable or compartmentalised.
The registration was limited to “banking and financial services”. Reducing it further to only “children’s savings accounts” would be too restrictive and potentially confusing for the trade and public.
The decision
The Court of Appeal set aside the High Court’s decision. It ordered Public Bank’s specification of services to be limited to “banking and financial services”, with the remaining services removed from the registration.
The Court applied a practical “fair description” approach. The inquiry was not simply a technical exercise in reading the specification. The Court considered the real commercial use of the mark and then determined an appropriate description that fairly reflected that use.
Broad claims narrowed
A registration should not preserve unused commercial territory.
Use must be real
Evidence of genuine market use matters more than a general future intention.
Fair description
The Court may choose a commercially sensible middle ground rather than the narrowest possible wording.
Why this matters
This case is significant because it is one of Malaysia’s leading decisions on partial revocation for non-use under the Trademarks Act 2019. It signals that proprietors should not treat broad specifications as defensive placeholders.
For applicants, it is a reminder to file strategically but honestly. For challengers, it shows that partial revocation can be a targeted tool to clear unused parts of a registration without necessarily removing the mark entirely.
Commentary
The decision adopts a cautious and commercially balanced approach. It protects genuine use while preventing proprietors from maintaining overbroad monopolies that are not supported by actual market activity.
Trademark owners should audit their portfolios, align specifications with present and planned use, preserve evidence of use, and avoid relying on broad descriptions that cannot be defended if challenged. Where a business expands into new services, fresh filings may be safer than assuming an old broad registration will cover everything.
This article is for general information only and does not constitute legal advice. Non-use revocation, partial revocation and trademark portfolio strategy are fact-sensitive and should be assessed against the registration, evidence of use and commercial context.
