Industry: Cosmetics and Skincare
Matter Type: Trademark Opposition
Status: Completed – Client Victory (No Appeal)
Background and Challenge
A cosmetics manufacturer faced trademark opposition from a globally recognized brand alleging confusing similarity. This high-stakes dispute required exceptional legal endurance and strategic expertise to defend the client’s brand identity against a formidable opponent.
Key Takeaways
- The client successfully defended its trademark after facing opposition from a globally recognized brand, marking a decisive win in a high-stakes dispute.
- The case spanned nearly three decades, demonstrating the exceptional legal endurance and continuity required to maintain a consistent, long-term defence strategy.
- KASS International’s evidence-driven approach, including a robust Counter Statement, Statutory Declaration and Written Submissions, proved critical in establishing the trademark’s distinctiveness and independent rights.
- Expert oral advocacy during the inter partes hearing before the Registrar played a pivotal role in dismantling opposition claims and strengthening the client’s position.
- The opponent’s decision not to appeal confirms a landmark victory that highlights KASS International’s tenacity, technical excellence and long-term commitment to protecting brand rights.
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Pain Points
Opposition from well-known global competitor with substantial resources
Extended legal uncertainty spanning decades
Risk of losing valuable brand equity and market position
Need for sustained expert advocacy over extraordinary timeline
KASS International’s Approach
We deployed comprehensive contentious trademark expertise:
Defensive Documentation: Filed robust Counter Statement systematically refuting opposition grounds
Evidence Strategy: Prepared compelling Statutory Declaration establishing independent trademark rights and distinctiveness
Written Advocacy: Developed persuasive Written Submission with detailed legal and factual analysis
Hearing Representation: Represented client in inter partes hearing before the Registrar, presenting oral arguments and defending against opposition challenges
Resolution Strategy
Over 29 years of proceedings, KASS International provided:
Unwavering strategic guidance and case management
Expert representation at critical hearing stages
Sustained advocacy maintaining case strength across decades
Coordination across changing legal landscapes
Key Outcomes
The Registrar ruled conclusively in our client’s favor, securing trademark registration. The opponent’s decision not to appeal represents complete vindication of our strategy and a landmark victory in Malaysian trademark law.
This extraordinary case exemplifies KASS International’s:
Commitment to clients through prolonged disputes
Strategic legal advocacy against major global brands
Technical excellence in contentious trademark matters
Tenacity in protecting brand rights regardless of opposition strength.