The Court of Appeal’s Landmark Ruling On Trademarks

The Court of Appeal, in TransferWise Ltd v Public Bank Berhad [2025] 2 CLJ 765, delivered a landmark judgment on the revocation of trademarks under Section 46(1)(a) of the Trademarks Act 2019 (TMA 2019). This decision clarified the definition of an “aggrieved person”, established the burden of proof in non-use revocation cases and outlined the extent to which the court can revoke or limit the scope of goods and services in cases of partial revocation.

Brief Background

Public Bank Berhad (PBB), registered “” (PBB’s Wise trademark) under Class 36 in 1997 which was primarily used for children’s savings accounts.

TransferWise Ltd, a UK-based company that rebranded as Wise Payments Ltd in 2021 (TransferWise) provides currency exchange and transfer services. Seeking to establish a presence in the Malaysian market, the company began using the “TransferWise” word mark through a third party in 2017 and from 2019 onward, used both the “TransferWise” and “Wise” marks (collectively referred to as “TransferWise’s Wise trademark”) through its wholly-owned subsidiary, Wise Payments Malaysia Sdn Bhd.

In 2021, TransferWise filed an application under Section 46 of the TMA 2019 to expunge and remove PBB Wise trademark, save for children’s savings accounts, arguing non-use for services beyond children’s savings accounts.

Legal Issues

Who qualifies as an "aggrieved person" under Section 46(1)(a) of the TMA 2019?

Whether there is sufficient evidence of non-use to justify partial revocation of PBB’s Wise trademark?

Whether banking and financial services can be severed and compartmentalised, limiting only to “children’s savings accounts” under Section 46(4) of the TMA 2019?

The Court of Appeal’s Analysis

Definition of "Aggrieved Person"

The Court of Appeal concluded that an "aggrieved person" under Section 46(1)(a) of the TMA 2019 must meet four key conditions:

The party must have used the mark as a trademark or have a genuine and immediate intention to do so.

The party must be engaged in a trade identical or similar to the registered trademark owner.

The party must have a legal interest, right, or legitimate expectation in the mark.

The presence of the registered mark must substantially impact the party’s interests / rights.

The court further clarified that if a trademark is used by a subsidiary or licensee, such use accrues to the proprietor of the mark. Consequently, the proprietor qualifies as an “aggrieved person” under Section 46, granting it the necessary locus standi to seek revocation of a registered mark for non-use.

In this case, the proprietor of the TransferWise’s Wise mark was TransferWise, not its subsidiary, Wise Payments Malaysia. The court found that TransferWise had used the TransferWise’s Wise mark as early as 2017 through a third party and since 2019 through its subsidiary in Malaysia.

Having established these facts, the court ruled in favour of TransferWise on the remaining conditions and held that TransferWise was an “aggrieved person” with locus standi to file for the partial revocation of PBB’s Wise trademark.

Burden of Proof in Non-Use Revocation

The court held that the burden of proof in a non-use revocation case is twofold:

(a) The claimant (TransferWise) bears the initial burden of presenting prima facie evidence of non-use.

(b) The trademark owner (PBB) then bears the burden to rebut the claim by demonstrating genuine use of the mark.

TransferWise submitted two investigation reports showing that PBB’s Wise mark was only used for “children’s savings accounts” under Class 36. The court was satisfied that TransferWise’s evidence amounted to prima facie evidence of non-use of the PBB Registered Wise Mark, save for children’s savings accounts, for a continuous period of three years as required under Section 46(1)(a) of the TMA 2019.The burden of proof then shifted to PBB but PBB failed to provide evidence of using the PBB’s Wise mark for services beyond children’s savings accounts.

“[61] Since the appellant has establish a prima facie case of non-use of the respondent’s trademark for any services, other than children’s savings accounts, during the relevant statutory period, the burden then shifted to the respondent as the registered proprietor to show evidence of use during the material period of time.

[62] We are of the considered opinion that the respondent had failed to rebut the evidence and to establish use of the PBB registered Wise mark in respect of any of the registered services. The evidence adduced by the respondent discloses, if at all, only use of the PBB registered Wise mark in respect of ‘children’s savings accounts.”

Partial Revocation under Section 46(4) of the TMA 2019

The Court of Appeal concurred with the High Court that partial revocation was permissible under Section 46(4) of TMA 2019. However, it disagreed with the High Court’s finding that banking and financial services could not be easily severed and compartmentalised, and that the services covered under PBB’s Wise trademark registration were directly related to PBB’s existing and future services.

As this is the first partial revocation case in Malaysia, the court referred to precedents from the United Kingdom and Singapore. The United Kingdom adopted a more liberal approach, allowing trademark specifications to be rewritten in a more specific manner—though not to an overly granular level. In contrast, Singapore took more conservative stance, permitting limitations to specifications only to the extent that they remain related to the original registration, without rewriting them with excessive specificity. The Singaporean court emphasised that over-narrowing a trademark’s scope could lead to unnecessary confusion and restrictions, ultimately going against the interests of both the public and the trade.

In this case, it was clearly established that PBB’s Wise trademark had only been used for children’s savings accounts. Adopting the Singaporean approach, the Court of Appeal did not limit the specification exclusively to “children’s savings accounts” alone. Instead, it partially revoked PBB’s registration by restricting it to “banking” and “financial” services, the only original service categories that relate to “children’s savings accounts”.

Conclusion

The Court of Appeal’s decision in TransferWise Ltd v Public Bank Berhad marks a significant development in Malaysian intellectual property law, particularly in the realm of trademark revocation for non-use. It sets a clear precedent on the qualification of an “aggrieved person” under Section 46(1)(a) of the TMA 2019 and establishes a structured framework for the burden of proof in non-use revocation cases.

By permitting partial revocation, the ruling reinforces that trademark rights are not absolute and must be supported by genuine commercial use. The court’s adoption of the Singaporean approach in determining the appropriate limitation of trademark specifications ensures a balanced application of the law, preventing unjust monopolization while safeguarding legitimate business interests.

This case serves as authoritative guidance for businesses operating in Malaysia, particularly in managing trademark portfolios, challenging inactive registrations and navigating legal standards for non-use revocation. It underscores the importance of active trademark use and highlights the need for strategic trademark management to avoid legal vulnerabilities.

14 April 2025