The Evolution of Partial Revocation in Malaysia’s Trademark Law – A Landmark Ruling in Transferwise Ltd (now Wise Payments Ltd) v. Public Bank Bhd | JH Yee & Co.

The Evolution of Partial Revocation in Malaysia’s Trademark Law – A Landmark Ruling in Transferwise Ltd (now Wise Payments Ltd) v. Public Bank Bhd

Introduction

The case of Transferwise Ltd v. Public Bank Bhd [2025] 2 CLJ 765 marks a pivotal moment in Malaysia’s trademark jurisprudence, particularly concerning the doctrine of partial revocation. Prior to the enactment of the Trademarks Act 2019, Malaysian courts grappled with the absence of explicit statutory provisions allowing partial revocation of trademarks for non-use. This article explores how the Transferwise case clarified the legal landscape, affirming the courts’ authority to partially revoke unused trademark registrations under the new Act.

The Legal Backdrop: Pre-2019 Uncertainty

Prior to the enactment of the Trademarks Act 2019, Malaysia’s trademark framework was regulated by the Trade Marks Act 1976, which did not expressly provide for the partial revocation of trademark registrations. In the absence of clear statutory guidance, Malaysian courts adopted a restrictive interpretation of revocation, effectively precluding the removal of trademarks even where non-use was established for certain goods or services within a broader registration. This judicial approach led to significant inefficiencies in the system, as legitimate businesses were often obstructed by dormant or overly broad registrations that were not actively utilized in connection with all claimed categories.

The Transferwise case highlighted this tension. At the High Court, the judge initially ruled against partial revocation, citing the inability to "sever and compartmentalise" banking and financial services. This decision reflected the pre-2019 reluctance to dissect broad trademark specifications, even where evidence showed non-use for certain services.

The Trademarks Act 2019: A Game-Changer

Section 46(4) of the Trademarks Act 2019 introduced a critical reform:

"Where grounds for revocation exist in respect of only some of the goods or services for which the trademark is registered, revocation shall relate to those goods or services only."

This provision aligned Malaysia with jurisdictions like the UK and Singapore, where partial revocation is well-established. The Transferwise appeal became the first major test of this new power.

The Court of Appeal’s Landmark Ruling

The Court of Appeal overturned the High Court’s decision, emphasizing three key principles:

Aggrieved Person Test: The appellant, Transferwise, satisfied the threshold as an "aggrieved person" under Section 46(1)(a) by demonstrating:
Prima Facie Non-Use: Transferwise adduced investigation reports proving Public Bank had only used its Wise mark for "children’s savings accounts" since 1997, leaving other registered services (e.g., money exchange, insurance) unused for over three years.
Partial Revocation under Section 46(4):

The Court rejected the High Court’s rigid view, holding that banking services could be severed.
Citing UK and Singapore precedents (Minerva Trade Mark [2000] FSR 27; Weir Warman Ltd [2007] SGHC 59), it ruled that partial revocation ensures trademarks reflect actual use, preventing "unjust monopolies."
Public Bank’s registration was limited to "banking and financial services," while unused categories (e.g., insurance, stock brokerage) were revoked.

Implications for Trademark Practice

The judgment has far-reaching consequences:

Clarity for Proprietors: Trademark owners must now ensure consistent use across all registered services or risk partial revocation. Broad registrations without genuine use are vulnerable.
Strategic Filings: Applicants may adopt narrower specifications to avoid future challenges.
Alignment with Global Standards: Malaysia’s approach now mirrors the UK and Singapore, fostering predictability for international businesses.

Conclusion

Transferwise Ltd v. Public Bank Bhd cements partial revocation as a cornerstone of Malaysia’s trademark regime. By embracing Section 46(4), the Court of Appeal struck a balance between protecting legitimate interests and preventing trademark hoarding. This decision not only resolves prior ambiguities but also signals Malaysia’s commitment to modern, equitable IP enforcement.

For businesses, the takeaway is clear: proactive trademark management—ensuring use aligns with registrations—is essential to safeguard rights in this new era.