Reported case: Pirelli & C. S.p.A v Chip Hwa Sdn Bhd | Reported: 2 March 2026
Trademark registration is an important step in protecting a brand. However, effective protection also requires ongoing monitoring and timely assessment of conflicts. A Malaysian Court of Appeal decision involving Pirelli & C. S.p.A and Chip Hwa Sdn Bhd illustrates the possible significance of delay in trademark litigation.
Background of the dispute
Chip Hwa Sdn Bhd held a Malaysian trademark for children’s clothing featuring the word PIRELLI with distinctive design elements. The mark was registered in 1986. Pirelli later challenged the registration and brought claims including trademark infringement, passing off, revocation and invalidation.
According to the published case report, Pirelli had been aware of Chip Hwa’s use of the mark for many years, and the parties had a history of prior discussions and proceedings.
What did the courts decide?
The High Court dismissed Pirelli’s claims in 2023. The published report states that the High Court considered prolonged delay and acquiescence and applied the equitable doctrine of laches in the circumstances.
In 2026, the Court of Appeal dismissed Pirelli’s appeal and upheld the High Court’s decision, with costs of RM30,000 awarded to Chip Hwa.
The outcome is fact-sensitive. It does not establish that passage of time automatically defeats every statutory claim for infringement, invalidation or non-use revocation.
Key lessons for trademark proprietors
1. Monitor potentially conflicting registrations
Businesses should regularly review relevant trademark filings and market activity, particularly for core brands.
2. Investigate disputes promptly
When a potentially conflicting mark is identified, assess the available legal and commercial options while evidence remains accessible and procedural opportunities may still be available.
3. Keep a reliable evidence trail
Maintain records of trademark use, earlier correspondence, marketplace activity and efforts to resolve disputes. These materials may become important in future proceedings.
4. Do not rely solely on brand reputation
Even internationally recognised businesses must establish their rights and remedies under the law applicable to a particular dispute.
Beyong IP’s Perspective
Trademark rights should be reviewed and managed throughout the life of a brand. Beyond renewal filings, proactive monitoring and timely decision-making can help trademark proprietors identify vulnerabilities before they escalate into costly disputes.
How Beyong IP Can Assist
Beyong IP assists businesses with trademark searches, registration, portfolio management, MyIPO examination objections and preliminary assessments of trademark conflicts. Contact our team to discuss a suitable brand-protection strategy.
Trademark services: https://beyongip.com/trademark-services/
Enquiries: https://beyongip.com/ | general@beyongip.com | +60 17-815 7771
Editorial note: This article is provided for general information and does not constitute legal advice. Specific matters require assessment of the facts and applicable law.
