Intellectual property in Malaysia
Chooi & Company and Cheang & Ariff
ITA committee member Cindy Goh Joo Seong leads the IP team at Chooi & Company and Cheang & Ariff. Complementing its domestic offering with a substantial global footprint (it handles work involving countries such as Japan, Korea, the US, Germany and Brazil), it counts major education, cosmetics and tech clients within its client roster. Recent work maintains a strong focus on patent infringements, passing off, trade mark disputes and copyright violations. In particular, a key highlight is the firm's representation of Aizuddin bin Abd Samad in a novel trade mark case involving claims of beneficial ownership and constructive trust.
Chubb Insurance Malaysia Berhad
George Watson Group (Scotland)
Tramontina S/A Cutelaria (Brazil)
Kyocera Corporation (Japan)
JPG Enterprise Pte Ltd (Singapore)
Arcadia Group (UK)
Belven Group (Belgium)
Sri Nona Industries Sdn Bhd
MeCan App Sdn Bhd
- Assisted Hovid Berhad with a patent infringement and patent invalidation suit.
- Represented SPC Diatech LLC (Russia) in a suit involving various causes of action including Copyright Infringement, Breach of Confidential Information, Breach of Contract, Unlawful Interference and Defamation.
- Assisted Tramontina S/A Cutelaria (Brazil) in connection with a trade mark infringement suit.
Christopher & Lee Ong's Sri Sarguna Raj heads the firm's intellectual property, sports and gaming group. Specialising in anti-piracy, his work also includes non-contentious aspects such as advising on franchising, sponsorship and merchandising agreements. More broadly, the team covers issues pertaining to trade mark infringement, patents, copyright, industrial designs, confidential information and the enforcement of Anton Piller orders. AirAsia Berhad is a key client for which it has carried out audits, clearance searches and overseas trade mark prosecutions in both ASEAN and some 27 other jurisdictions.
‘The firm was chosen because it offers excellent service, prompt replies and competitive fees and has capabilities across the full spectrum of contentious and non-contentious intellectual property matters‘.
‘My main contact in the firm is Mr. Sri Sarguna Raj, who heads the Intellectual Property Practice Group, in the firm. He is very hands on and dedicated with the matters that we have entrusted the firm with. In relation to trademark advice, filing strategies and office actions issued by the relevant trademark office, he also provides brilliant and cost-effective solutions to the issues at hand‘.
Suaran Singh Sidhu and Brian Law lead the IP group at LAW Partnership. With experts in litigation, the team covers the full range of infringement issues, including anti-counterfeiting actions. It acted for Shell Brands International AG in actions against the supply of counterfeit lubricant oil. More broadly, the firm is adept at handling issues such as passing off, copyright infringement and global filing programmes. It is noted for attracting key names from big pharma, and beverages, sporting goods and music publishing (Sony). Cheah Chiew Lan covers geographical indication cases, designs, domain names and patents while Ameet Kaur Purba is a key new hire (formerly of Shearn Delamore & Co).
Sri Paandi Restaurant Sdn. Bhd.
Jas Hennessy & Co.
Sony Music Publishing Sdn Bhd
Shell Brands International AG
Mega Fortris Group
Rotta Research Laboratorium SPA & Antah Pharma
Procter & Gamble
Donutes Coffee and Cake Baking Co. Ltd.
Pets Global Pte. Ltd.
Music Authors’ Copyright Protection
- Acting for Shell Brands International AG, conducted simultaneous enforcement raid actions against perpetrators, resulting in the seizure of some 209 drums of suspected counterfeit lubricant oil. This was one of the largest seizures for counterfeit engine oils in the world.
- Actedfor Sri Paandi Restaurant Sdn. Bhd in a dispute concerning use of the trade name “SRI PAANDI”. This addressed a series of complex issues and novel points of law that had not yet been tested in Malaysia.
- Represented Jas Hennessy & Co. a premium French producer of distilled beverages in planning and strategising anti-counterfeiting activities. Retailers of counterfeit spirits were subsequently raided.
Led by the 'world-class' Karen Abraham, Shearn Delamore & Co's intellectual property team also features litigation expert Indran Shanmuganathan, an 'experienced lawyer' with 'good tactical knowledge and intimate awareness of legal complexities'. Handling trade mark violations, data protection and industrial designs, the firm also covers matters such as copyright abuse and competition law. Notably, it has particular expertise in the telecoms sector where it advises on relevant aspects pertaining to the Malaysian Communications and Multimedia Commission. Janet Toh, Michelle C Y Loi and Timothy Siaw are collectively recommended for the protection of IP assets, including complex patents and for their expertise relating to life sciences. Jyeshta Mahendran is another name to note.
Other key lawyers:
‘The IP team that we work with at Shearn Delamore & Co are very co-operative, knowledgeable, professional and accessible. Irrespective who we work with, the level of service is excellent and consistent. They are a very reliable and proactive team‘.
‘Shearn Delamore & Co has long been recognized as one of the best- if not the best – IP firms in Malaysia. Amongst their clients are international and Malaysian leaders covering all sectors. For patents, copyright and trademarks, you will not find a firm with the level of competence and sophistication to manage local work, but also complex multi-jurisdictional enforcement projects‘.
‘Strong IP knowledge, particularly with patents, and awareness of life sciences field‘.
‘Karen Abraham is the safe hands that leads this team, and she sets the bar extremely high for her team’s performance, in delivering world-class service and advice. She is world-class and an elite amongst IP practitioners‘.
‘Indran Shanmuganathan is an experienced lawyer with good tactical knowledge and intimate awareness of legal complexities‘.
‘Mr Indran Shanmuganathan – A well experienced IP lawyer who is accessible, honest with his legal opinions, professional and easy to work with. He is prompt with his advise and always on top of all matters. Ms Jyeshta Mahendran – Another well experienced lawyer who we work with on all IP applications and renewals. She is very prompt in her responses, accessible, professional and her legal opinion is reliable‘.
Mead Johnson Nutrition LLC
Delima Oil Products
General Video LLC
Wahl Clipper Corporation
Dyson Technology Limited
ResMed Pty Ltd
Honeywell International Inc.
Energizer Holdings, Inc.
LVMH Fashion Group
The Liverpool Football Club And Athletic Grounds Ltd
Merck Sharp and Dohme Corp
Asia File Products Sdn Bhd
Sinowaja (Malaysia) Sdn Bhd
Dorpan SL and Melia Hotels International S.A.
Munchy Food Industries Sdn Bhd
El Baik Food Systems Co. S.A.
Garden International School Sdn Bhd
Nippon Paint (M) Sdn Bhd
Astro Malaysia Holdings Berhad
Petroliam Nasional Berhad (PETRONAS)
Johnson & Johnson
The intellectual property offering at Skrine is characterised by the breadth of its sector expertise - including healthcare, telecoms, financial services, international airlines and manufacturing. Team leads Charmayne Ong and Khoo Guan Huat support this work with respective expertise in TMT law and disputes. More broadly, the firm covers all IP subject matters with an emphasis on design, copyright and franchising disputes. Key clients are attracted from the fashion, beverages and hospitality sectors with San Miguel Corporation featuring in a recent win in a patent infringement case. Grace Teoh (recently made partner) advises on IP strategy, Teh Hong Koon covers multi-jurisdictional trade mark protection and Kuek Pei Yee is regularly sought out as lead counsel at both trial and appellate levels.
Dart Industries Inc
Tupperware Brands Malaysia Sdn Bhd
Huasin Food Industries Sdn Bhd
Passion Trading Sdn Bhd
Nuctech Company Limited
F Hoffmann La-Roche AG
Roche (Malaysia) Sdn Bhd
San Miguel Corporation
San Miguel Yamamura Woven Products Sdn Bhd
Radical Galaxy Sdn Bhd
MForce Bike Holdings Sdn Bhd
- Acted for Dart and Tupperware Brands Malaysia against CMN International Sdn Bhd and other Defendants, with recent success in the High Court.
- Defended Passion Trading Sdn Bhd, one of the main suppliers of hair and beauty equipment across Malaysia, in 2 criminal prosecutions under the Trade Descriptions Act 2011.
- Assisted Nuctech Company Limited (Nuctech) and Tsinghua University in a patent infringement dispute, which included a significant post-trial discovery application, committal proceedings and steady progression across related appeals.
Wong & Partners
Having played a key role in developing Wong & Partners' IP team, Kherk Ying Chew has an established reputation in both contentious and non-contentious matters. The team handles transactional issues involving the transfer of IP tech, IP valuations, and portfolio management in addition to litigation, enforcement of IP rights, and anti-counterfeiting. Notably, the firm is distinguished by its patent expertise where it advises clients on protection under both local and international treaties. Areas of expertise also include freedom-to-operate assessments, technical drafting and prior art searches. Tze Lin Chong assists with regional enforcement programmes while Sonia Ong (a recent hire) is known for her track record in due diligence and auditing.
Telekom Malaysia Berhad
CIMB Group Berhad
Malaysia Airlines Berhad
GrabTaxi Holdings Pte Ltd
Petronas Carigali Sdn Bhd
- Represented “Centek Group” in a complex action against four individual defendants and two PLCs for breach of confidence relating to significant amounts of trade secrets and confidential information.
- Represented Petronas Carigali Sdn Bhd (“Petronas”) against a patent infringement claim filed by Kingtime International Limited (“Kingtime”).
Boutique firm Wong Jin Nee & Teo focuses on IP and technology and assists clients with both contentious and non-contentious advisory matters. It handles the life cycle of IP assets, in particular brands, patents, copyright and industrial design protection and the enforcement of rights together with the commercial exploitation of IP assets. Additionally, it advises on competition law and consumer protection matters. Jin Nee Wong and Bong Kwang Teo jointly lead with respective expertise in transactional and contentious matters.
The intellectual property team at Zaid Ibrahim & Co (a member of ZICO Law) is led by tech law expert Linda Wang. Catering for major clients such as Warner Bros, Chanel and DC Comics, it handles all aspects from the inception of copyright-protected works through to design protection, filing strategies, and criminal enforcement ( anti-counterfeiting). In addition, assistance can be sourced in relation to both project commercialization and regulatory advice. Matters pursued cover all 10 ASEAN member states. Additionally, Su Siew Ling handles the sale and acquisition of rights, and Ong Boo Seng undertakes litigation.
- Acted as solicitors and counsel for the Applicant/Plaintiff, Biocon Ltd. and Biocon Sdn Bhd in patent invalidation action before the High Court.
- Represented Essity Hygiene and Health AB (Plaintiff) who sought to expunge a trade mark belonging to Praba’s VCare Health Clinic Private Limited (Defendant) on the ground of non-use. Successfully argued that the Plaintiff was a person aggrieved with locus standi to bring the action, given its pending trade mark applications in Malaysia as well as its business expansion in other jurisdictions.
- Acted for Honda Motor Co. Ltd against the defendants MForce Bikes and Demak respectively in two separate actions, suing for infringement of Honda’s copyright in its iconic EX-5 motorcycle. In both the actions, we successfully proved copyright in the whole of the EX-5 motorcycle and that Honda owns such copyright after trial hearings before the High Court.
Gan Partnership's IP offering has been bolstered following the arrival of former Lee Hishammuddin Allen & Gledhill partners Bahari Yeow and Lim Zhi Jian, both experienced litigators. Drawing on its specialist strengths in dispute resolution and ADR, the team recently advised Moët Hennessy Louis Vuitton on the advertising, labelling, and packaging of alcoholic drinks in Malaysia.
‘The IP team at Gan Partnership does more than traditional sector work. We value their expertise and in-depth understanding of the industry and the unique regulatory regime that governs it‘.
‘The IP team at Gan Partnership, led by Bahari and Jian, is undoubtedly very skilled. Besides being a dynamic team, you can always rely on them for on-point legal advice, be it for filing for protection to more contentious matters such as domain name infringement. They are quick to respond and are always on-point and appropriate. Happy to say that where IP matters are concerned, Bahari and his team are definitely the ones you should turn to‘.
‘Gan Partnership’s strength lies in its close relationship with clients. They often find ways to solve problems and look for ways to address their clients’ concerns and needs‘.
‘Responsive, knowledgeable, and excellent value‘.
‘Bahari definitely stands out as the go-to IP lawyer. Over the years, Bahari has played a crucial role in assisting our organisation in all IP related matters. His depths of legal acumen, industry experience and gentle demeanour adds to our confidence that our interests and concerns are well-taken care of and thought of. I would not hesitate to recommend Bahari any time!‘
‘Bahari and Jian are exceptional in their responsiveness – they are always supportive and always willing to exert significant effort to help even in extremely urgent requests. They are very thorough in their research and thoughtful in their analysis, and they can balance the same with practical and pragmatic advice on risk mitigation‘.
‘Bahari and Jian are our go-to experts for IP work in Malaysia. Approachable, responsive and provide cost-effective solutions‘
Asian International Arbitration Centre (AIAC)
Employees’ Provident Fund
Great Eastern Life Assurance
Koch Industries, Inc.
Moët Hennessy Louis Vuitton
UMW Grantt International Sdn Bhd
Hap Seng Consolidated Berhad
Fipper Marketing Sdn Bhd
Kien Huat Realty Sdn Bhd
- Representing Repsol in a multi-jurisdictional patent dispute involving a patented diagnostics technology
- Acted for a leading Indonesian F&B company on a novel issue of law and set a historic ruling in respect of parallel import under the Trade Descriptions Act 2011
- Advised a Fortune 500 company on the advertising, labelling, and packaging for alcoholic drinks from the perspective of Malaysian laws
Both Malaysian and international clients are served by the intellectual property team at Lee Hishammuddin Allen & Gledhill. Its expertise spans media law, franchising, and licensing as well as patent, and copyright disputes. It undertakes matters such as pursing ex-parte injunctions and other court proceedings through to cases before the Trade Marks Office. It counts Samsung, McDonald’s and Apple among its client base. In particular, it recently focused its efforts on concluding a case for Philip Morris where it successfully prevented infringing goods from leaving Malaysian waters. Eunice Chan Wei Lynn and Chew Yi Hsien are the key names to note. Bahari Yeow Tien Hong and Zhi Jian Lim have departed for Gan Partnership.
‘LHAG’s IP team are proactive, clear and to the point in their advice‘.
‘The team is resourceful and always trying to comply with our needs and queries. Easy to work with, very professional and clear communicators. They are knowledgeable and also give practical and applicable solutions‘.
‘Eunice Chan is readily available: always willing to help, listen, digest and think from the perspective of her clients‘.
‘Partners are easily contactable even beyond normal working hours in urgent business needs, particularly Eunice Chan Wei Lyn. The Associates are very helpful and provide a fast response, in particular Chew Yi Hsien‘.
‘The whole IP team are always available whenever we need them especially the partner, Ms Eunice Chan Wei Lynn and Ms Chew Yi Hsien. The stand out quality in this firm is their quick response and the ability to reach them. They are accessible anywhere and everywhere. Its not just the junior associate but the partners are also around to guide us whenever needed‘.
Moët Hennessy Louis Vuitton
Koch Industries, Inc.
Apex Healthcare Berhad
Asian Football Confederation
Khazanah Nasional Berhad
InvestKL (government agency)
Perusahaan Otomobil Kedua Sdn Bhd (PERODUA)
Nirvana Asia Group
Maxis group of companies
- Acted as Apple’s Malaysian representative in a global trade mark dispute between Apple and Swatch.
- Advised McDonald’s after it received a cease and desist letter of demand from a competitor alleging an advertising campaign was infringing their trade mark rights.
- Assisted Philip Morris in successfully obtaining urgent ex-parte injunctions restraining infringing goods from leaving Malaysian waters, and ultimately achieved a successful Final Judgment after a 5-year battle.
The full-service intellectual property team at Rahmat Lim & Partners handles a range of contentious and non-contentious matters. Lead Pauline Khor is expert in ancillary rights, litigation, advising on anti-counterfeiting strategies and the management of portfolios.
The 'outstanding' registered trade mark attorney Yvonne Ong leads the intellectual property team at Raja, Darryl & Loh. Covering brand strategies, and commercialisation such as licensing, it also handles the enforcement of IP rights, catering for both multinationals and SMEs. In particular, clients are drawn from sectors such as food and beverage, ﬁnancial services, construction, manufacturing and technology. The firm recently welcomed new partner Ooi Ling Leong who manages both litigation and prosecution matters. Hon Leng Choon and the 'helpful and supportive' Chew Phye Keat are additional key names to note.
‘We appreciate the prompt responses we receive from the team‘.
‘Partner Yvonne Wong is outstanding. She is prompt and gives solutions to client issues. We are very happy with her services. Mr. Chew Keat is also very helpful and supportive‘.
Hewlett Packard Enterprise Company
Ajinomoto Co. Inc
- Advised a client on its rebranding exercise in respect of 10 countries in the ASEAN region.
- Successfully obtained a decision at the High Court that confirmed the position that there is no ‘dual protection’ under design and copyright laws.
Working on both the establishment and enforcement of intellectual property rights, the team at Shook Lin & Bok is headed by the 'unmatched' Michael Soo. Serving both domestic and international clients, it handles the filing and prosecution of trade and service marks, patents, utility innovations and industrial designs. Wendy Lee Wan Chien is experienced in opposition proceedings and conducts both due diligence and contract reviews.
Other key lawyers:
‘The team helmed by Michael Soo is very well respected‘.
‘Michaal Soo stands out for his in-depth knowledge of IP and his experience in the sector is unmatched‘.
Bayerische Motoren Werke and the BMW Group of Companies
Goodyear Tire & Rubber Company
Hershey Group of Companies
YTL Group of Companies
Fraser and Neave, Limited
United Detergent Industries
Public Bank Berhad
J Choo Limited
UNZA International Limited
Lee Kum Kee Company Limited
Summit (M) Sdn Bhd
Hotel Equatorial Sdn Bhd
Elite Gold Ltd
Authentic Brands Group, Inc
Stanley Black & Decker
- Acting for Nam Heong Restaurant Holdings Sdn. Bhd. and Esquire Kitchen Sdn. Bhd. persuaded the Court to find that the clients’ predecessors in title were the first users and bona fide proprietors of the “Nam Heong” mark, a mark which has been used since the 1930s.
IP matters undertaken by Tay & Partners include franchise negotiations (a key area of work), together with the registration and protection of patents, trade marks and copyright. Led by 'trusted advisor' Lin Li Lee, an expert in anti-piracy strategies and trade mark protection generally, it also features Bee Yi Lim who is experienced in dealing with all types of IP, both advisory and contentious. The Kraft Heinz Company is a key client.
Other key lawyers:
‘The Firm has deep knowledge and experience on IP disputes. Have a very capable team to deal with major and complex matters in the high courts in Malaysia. Good communication skills with client in explaining complex mechanics of IP issues. Good negotiating skills with opposing team. Very impressive advocacy at trials‘.
‘They have a well-run team. Developments are reported promptly and queries are also dealt with comprehensively‘.
‘Tay & Partners has extensive background and knowledge in the field of counterfeiting, anti-counterfeiting efforts, and trademark prosecution in Malaysia and elsewhere. The information they provide is always prompt, very clear, and thorough‘.
‘Provides good advice relevant to the jurisdiction‘.
‘Competent, timely and consistent‘.
‘Lee Lin Li is the reason we send work to the firm. She is very knowledgeable, across a broad range of topics, but we have particular trust in her for her expertise in trade mark law and practice. She has moulded the IP team to work in what we see as an efficient manner‘.
‘Lin Lee responds quickly and thoroughly to all inquiries and she is very thoughtful and creative in providing options that best suit our company’s needs. Lin and her team have been critical in the development of our company’s anti-counterfeiting strategy in Malaysia‘.
‘Lin and the team are highly responsive, commercial and cost sensitive and make for excellent advisors in Malaysia, always but particularly in the current uncertain times‘.
Kingtime International Ltd
Celltrion Inc. / Celltrion Healthcare Co., Ltd.
Monash IVF Pty Ltd
Perusahaan Otomobil Nasional Sdn Bhd (PROTON)
Kuok Group / Shangri-La Group of Hotels
The Kraft Heinz Company
UEM Sunrise Berhad and its subsidiaries
Lazada South East Asia Pte Ltd / e-Cart Services Sdn Bhd (Lazada, Malaysia)
Etika Sdn Bhd
Alpha Max Group Limited
AAPC Singapore Pte Ltd
United Malayan Land Berhad and Avenue Ambience Sdn Bhd
Costa International Limited / Whitbread Group PLC
Guangdong OPPO Mobile Telecommunications Corp., Ltd.
Beijing DIDI Infinity Technology Development Co., Ltd.
Zhejiang Geely Holding Group Co., Ltd.
Perusahaan Otomobil Kedua Sdn Bhd / Perodua Sales Sdn Bhd
Lion Corporation, Japan
Melco Crown Entertainment and MCE (IP) Holdings Limited
Josephine, L K Chow & Co
Three leads steer the IP offering at Josephine, L K Chow & Co: Khaik Kew Peh, Cyndi Chow Li Kian and Huen Weng Yip. Operating since 2006, it regularly serves software clients (an area of excellence for the firm) as well as the owners of life-style products, charitable organisations and consumer items. The team is skilled in the protection of IP rights, including litigation and actions for discovery such as Anton Piller Orders.
Naqiz & Partners
Following the departure of Brian Lew, FSyed Naqiz directs the IP offering at Naqiz & Partners. Advising clients in sectors such as telecoms, licensing and pharmaceuticals, it handles a range of contentious and transactional matters. Notably, the firm has consolidated a reputation for its work in medicine, working with research institutions on the patenting of drugs as well as the application of medical technology.
Zain & Co
IP clients at Zain & Co secure advisory services in a range of matters such as anti-counterfeiting, franchising, industrial designs and trade mark prosecution. Notably, the firm recently assisted animation firm Base FX with the issues raised by its Asian expansion. The practice is led by Salwah Abdul Shukor, a specialist in issues such as mergers and acquisitions, initial public offerings and Islamic estate planning.
Roots and Shoots Environmental, Wildlife Conservation and Humanitarian Society (affiliate of Jane Goodall Institute Malaysia)
Keystone Enterprises Sdn Bhd and Alila Hotels and Resorts (Joint clients)
Sutera Habour Resort Sdn Bhd
- Advised client on their Asian expansion and providing industry intelligence and advisory on film post production benefits and policies which ended up securing the vote in favour of Malaysia
- Advised client in relation to strategic advisory and negotiations of the Grant agreement, specifically on the ownership of the intellectual property.
- Advised and act on behalf of client in relation to the infringement and passing-off of their trademark in multiple jurisdictions.