Intellectual property in Malaysia
Attracting praise for 'reasonable fees and outstanding service', the intellectual property team at Chooi & Company and Cheang & Ariff is best known for IP litigation, particularly patent and trade mark disputes. The group counts several well-known international brands among its clients, with expertise advising fashion, cosmetic and personal care brands, such as Arcadia Group, Estee Lauder and Mandom Corporation. Cindy Goh Joo Seong focuses on trade mark, copyright, patent and industrial design litigation, but also regularly provides brand protection advice to clients. Senior associate Keong Ming Wai continues to build a reputation for contentious matters.
Other key lawyers:
‘The team works well together. When the lawyer in charge of the case is not available to respond to us, their team works well in coordinating within the team and responds to us promptly.‘
‘The advice provided by the CCA is detailed and cautious. From our experience working with them, we’ve never encountered any apparent weakness that has affected negatively on their work.‘
‘Mr Lim Kuan and Ms Cindy Goh Joo Seng are very professional and provide timely advice and ensure the optimal result is achieved based on logic, goals and legal parameters.‘
‘The stand-out partners and associates we would recommend are: The standout partners and associates we would recommend are: Cindy Goh Joo Seong, Keong Ming Wai, Hayden Tan.‘
University of Oxford
Estee Lauder Group
- Defended pharmaceutical company Hovid Berhad against a patent infringement claim brought by Merck Sharp & Dohme Corp relating to a medical compound which is used to treat medical disorders of excess bone destruction.
- Defended Loob Holding, as former franchisee of La Kaffa International’s bubble tea franchise ‘CHATIME’, in a breach of the franchise agreement and passing off claim brought by the franchisor following La Kaffa International’s early termination of the agreement and the defendants resulting announcement that it will start its own bubble tea business with the brand called ‘TEALIVE’.
- Defended a reputable shopping retail outlet group in Malaysia in alleged industrial design infringement of the ‘Tupperware’ brand water bottle.
Christopher & Lee Ong's intellectual property team offers 'prompt replies and competitive fees' and has capabilities across the full spectrum of contentious and non-contentious intellectual property matters, but has particular expertise across trade mark, copyright and patent litigation. The group also benefits from being able to leverage the Rajah & Tann Asia network in cross-border instructions. Practice head Sri Sarguna Raj focuses on contentious IP matters, while the 'fast and reliable' Kim Poh Ng and Steven Cheok handle both non-contentious work and disputes.
Other key lawyers:
Top Glove Corporation Berhad
Yonex Co., Ltd
Powerscan Company Limited
Barnes Group Inc.
Iconix Consulting Sdn. Bhd.
L.A. Gear, Inc.
Astro GS Sdn Bhd.
United Detergent Industries Sdn. Bhd.
YTL Communications Sdn. Bhd.
Al Baik Fast Food Distribution Co. S.A.E
Coca-Cola Refreshments Malaysia Sdn. Bhd.
Elite Gold Ltd
Jyothy Laboratories Limited
Kumpulan Wang Persaraan (Diperbadankan) (“KWAP”) or the Retirement Fund (Incorporated)
BeSweet Creations LLC
DNC Asiatic Holdings Holdings Sdn Bhd.
Plateno Management (HK) Limited (a subsidiary of the Plateno Group)
Xana Hotelle Management (Guangzhou) Limited (a subsidiary of the Plateno Group)
- Successfully defended Skyworld Holdings Sdn Bhd, Skyworld Global Sdn. Bhd., Skyworld (Sabah) Sdn. Bhd., Sky World City Bhd, Yong Fook Ming & Lee Chia in a trade mark infringement, passing off and unlawful interference with trade action initiated by a property development company.
- Defending Powerscan Company in a patent infringement claim brought by Nuctech Company Limited and counterclaim for invalidation of the relevant patent.
- Advised Top Glove Corporation on transfer and assignment of patents and trade marks following its acquisition of another glove manufacturing company, Aspion Sdn Bhd.
The intellectual property team at Lee Hishammuddin Allen & Gledhill benefits from 'subject matter experts' who provide 'fast responses, customized service and flexible arrangements'. The group handles a full range of IP matters and counts telecoms, tobacco and automotive among its sector specialisms. Eunice Wei Lynn Chan combines IP protection and portfolio management experience with commercial, competition, and regulatory expertise – particularly in the pharmaceuticals, cosmetics, and food sectors – in advising on non-contentious matters. Bahari Yeow and Zhi Jian Lim left the practice in June 2020 to join Gan Partnership.
Other key lawyers:
‘The intellectual property team is just great! They are able to provide clients with sound advice/opinions which are not only based on the law but are relevant and adaptable to the business I am in.‘
‘Subject matter experts offer fast responses, customised service and flexible arrangements.‘
‘Their teamwork is excellent. They have a stable and quality structured management system with a pool of experienced personnel. They have always been responsive and revert promptly with direct and no-nonsense, commercially conscious advice.‘
Moët Hennessy Louis Vuitton
Koch Industries, Inc.
The Dover Corporation
Great Eastern Life Assurance
Government of Malaysia
- Representing Apple on Malaysia aspects of its global trade mark dispute with Swatch.
- Advised McDonald’s on a cease and desist letter from one of its closest global competitors, who alleged an advertising campaign was infringing off their trade mark rights.
- Acting for Repsol in a patent infringement claim brought by the owner of a Russian patented non-invasive soundwave diagnostics technology.
The 'reliable and professional' intellectual property practice at Shearn Delamore & Co has the expertise to handle a full range of IP matters for its impressive client roster of local and foreign companies including PETRONAS group, Merck Sharp and Dohme and Dyson Technology. The eight-partner team is led by IP litigator Karen Abraham and benefits from 'a great depth of knowledge and experience'. Timothy Siaw specialises in life science patent litigation, alongside 'skilled patent attorney' Zaraihan Shaari, who attracts praise for her 'well-developed technical skills and knowledge', while the 'highly-experienced' Indran Shanmuganathan handles a range of trade mark, copyright, patent, and industrial design litigation, and the 'extremely efficient' Jyeshta Mahendran focuses on the protection, maintenance and enforcement of rights.
‘The firm has expertise encompassing all manner of intellectual property related legal work.‘
‘The firm has expertise encompassing all manner of intellectual property related legal work. With a number of senior IP practitioners, they have greater depth of knowledge and experience.‘
‘Their advice is timely and cost-effective and they always take their client’s business needs into account.‘
‘Timothy is the go-to expert for intellectual property law – his self effacing demeanor makes him approachable and high contactable, where he counsels in a frank and honest manner.’
‘Michelle Loi Choi Yoke offers a business-friendly advice at a reasonable cost.’
‘Indran Shanmuganathan is a well-experienced IP practitioner who is very knowledgeable, willing to share his experience, provides honest view of the case, easily accessible and very down to earth.‘
‘Jyeshta Mahendran keeps the client up to date on progress of trademark applications, provides sound advise and very professional.‘
‘Michelle Loi Choi Yoke is an upcoming lawyer.‘
MEASAT Broadcast Network Systems Sdn. Bhd
Krispy Krunchy Foods, LLC
Johnson & Johnson
Merck Sharp and Dohme
El Baik Food Systems Co. S.A.
Nippon Paint (M) Sdn Bhd
Verizon Trade Marks Services LLC
Melia Hotels International S.A.
Reckitt Benckiser Corporate Services Ltd
National Basketball Association
Dyson Technology Limited
- Representing Merck Sharp and Dohme in a patent infringment claim against a third party and in a counter-claim challenging the validity of the patent.
- Successfully acted for Dorpan, SL and Melia Hotels International, S.A. in trade mark claim against a well-known local developer relating to the use of the word MELIA.
- Defended M Hospitality Group in a for trade mark infringement and passing-off claim brought by Millennium & Copthorne International in respect of the use the ‘M HOTEL’ mark.
Skrine's practice advises clients on protection, licensing and enforcement of intellectual property rights and assists with a range of trade mark infringement and passing-off claims, as well as patent, design and copyright litigation. Guan Huat Khoo and 'outstanding partner' Charmayne Ong jointly lead the practice and focus on contentious and non-contentious matters respectively. Other names to note include Pei Yee Kuek, who handles a range of IP litigation and recently represented Adidas AG and Adidas (Malaysia) in a trade mark infringement and passing off claim against LOF Fashion, and the 'knowledgeable' Hong Koon Teh, who has particular experience advising on creation, acquisition, prosecution, exploitation, and management of trade marks.
‘The team offers helpful and practical legal advice, reasonable service costs responsiveness and punctual working in a cooperative manner.‘
‘With insightful experiences in regard to IP practices, they assist us with helpful legal advice to achieve successful IP Prosecution in Malaysia.‘
Adidas (Malaysia) Sdn Bhd
Huasin Food Industries Sdn Bhd
Syarikat Faiza Sdn Bhd
Y&L Teknokraft Sdn Bhd
Nuctech Company Limited
Dart Industries Inc and Tupperware Brands Malaysia Sdn Bhd
La Kaffa International Co Ltd
- Acted for Adidas AG and Adidas in trade mark infringement and passing off claims against a large-scale counterfeit stockist and seller known as LOF Fashion Sdn Bhd.
- Representing Huasin Food Industries in an appeal to the Court of Appeal against the Kuala Lumpur High Court’s findings that it infringed Munchy Food Industries’ ‘LEXUS’ trademark.
- Represented &L Teknokraft Sdn Bhd, a local manufacturer of motorcycle handle grips and accessories, in enforcement actions and a civil suit for infringement and passing-off against Y-Teq Auto Parts (M) Sdn Bhd for using the ‘PLAYLIFE’ trademarks in relation to motorcycle grips.
The intellectual property team at Wong & Partners 'provides practical solutions' to a full-range of matter including enforcement and anti-counterfeiting work, portfolio management, litigation and corporate and commercial transactions. The practice counts Malaysia Airlines, Telekom Malaysia and GrabTaxi Holdings among its clients. The team led by Kherk Ying Chew, who has experience in handling a range of contentious and non-contentious matters, including infringement disputes and IP audits.
Other key lawyers:
‘Chew Kherk Ying demonstrates vast experience in this field and is able to provide sound advice in a relatively short time span.‘
GrabTaxi Holdings Pte Ltd
Malaysia Airlines Berhad
Telekom Malaysia Berhad
- Advised GrabTaxi Holdings Pte Ltd on a multijurisdictional review of the application and impact of local competition laws on Grab’s IP agreements and IP assets generally.
- Successfully defended Lunas Technologies ina copyright infringement claim brough by LKPP Corporation concerning a software used for palm oil estate management.
- Assisted Ralph Lauren with a raid action which led to the seizing of more than 2000 units of counterfeit items.
Intellectual property and technology boutique Wong Jin Nee & Teo handle a full-spectrum of contentious and non-contentious IP matters from creation and protection to portfolio management and enforcement to exploitation and monetisation. The group's client roster spans Malaysia companies as well as multinational and international companies, and well-known brands such as Under Armour, Visa and Intel Corporation. Founding partners Jin Nee Wong and Bong Kwang Teo jointly head the team and focus on transactional and contentious matters respectively.
Techdata Systems Sdn Bhd
NTN Bearing-Malaysia Sdn Bhd
Messrs Damian SL Yeo & LC Goh
KL Sports Medicine Centre
Kleinberg & Lerner, LLP
RHTLaw Taylor Wessing LLP
NCT Group of companies – including Galeri Tropika Sdn Bhd and Ion Delemen Hospitality Sdn Bhd
Sri America Travel Corp Sdn Bhd
Leo Pharma A/S
Warmal Wil Heavy Duty Pumps Sdn. Bhd.
- Successfully defended Xtalic Corporation in an appeal brought by Merck KGAA against the Registrar of Trade Marks’ decision, dismissing Merck’s opposition to Xtalic’s application to register its ‘XTALIC’ mark in Class 2.
- Acting for SkyWorld Development Sdn. Bhd. and SkyWorld Capital in a trade mark infringement, passing off and off and unlawful interference with trade claim brought against Skyworld Holdings Sdn. Bhd. and five other co-defendants.
- Representing YKL Engineering before the Court of Appeal relating to a patent and copyright infringement claim brought against a palm oil mill and the manufacturer of the palm oil mill’s machines.
Zaid Ibrahim & Co (a member of ZICO Law)
Zaid Ibrahim & Co (a member of ZICO Law)'s intellectual property team handles a full range of contentious and non-contentious instructions, for its impressive client-base, which includes international brands such as Chanel, Honda Motor and Marriott. The group is often instructed by clients in matters spanning the South East Asia region, and benefits, as a member firm of Zico Law, from the ability to leverage the networks regional IP capabilities spread across ten countries. IP and technology specialist Linda Wang is highlighted for litigation, and heads up the practice alongside Su Siew Ling, who handles a full range of instructions from creation, protection, and litigation, to enforcement, and Ong Boo Seng, who has experience in corporate and commercial IP mandates and disputes.
Honda Motor Co., Ltd.
Kyowa Hakko Bio
Pharmaceutical Association of Malaysia (PhAMA)
Franck Muller (FMTM)
Music Rights Malaysia Berhad (MRM)
Public Performance Malaysia
WeWork Companies Inc.
Starwood / Marriott
Etika Group of Companies
- Assisting WeWork with the prosecution, registration and enforcement of trademark rights.
- Advising Nestle on the prosecution, registration and enforcement of trademark and design rights in Malaysia and Singapore.
- Acted for Honda Motor in two separate copyright infringement claims against SYM and Demak respectively relating to Honda’s artistic works for the iconic EX-5 motorcycle.
- Representing Essity Hygiene and Health AB in a non-use cancellation claim relating to the mark V-CARE that is owned by an Indian company, Prabha’s VCare Health Pt Ltd.
- Assisted with the establishment of Music Rights Malaysia, as a single music licensing body for Malaysia, and continues to advise on the licensing and collection of music royalties and enforcement of music royalties payments.
LAW Partnership is frequently instructed in intellectual property infringement disputes and count IT, telecoms, media, e-commerce, and pharmaceutical among its sector specialisms. The three partner firm was established in January 2019 by former KDJLaw partners and benefits from being a relationship firm of the global firm of Eversheds Sutherland (International) LLP. Joint practice heads and founding partners include litigator Suaran Singh Sidhu; Cheah Chiew Lan, who focuses on IP prosecution and commercial matters, and Brian Law, who splits his time between Malaysia and Eversheds Harry Elias' Singapore office.
Sri Paandi Restaurant Sdn. Bhd.
Portcullis Holdings Malaysia
Gromark Consumers Enterprise Pte. Ltd.
Mega Fortris (Malaysia) Sdn. Bhd.
Rotta Research Laboratorium SPA & Antah Pharma
- Represented Portcullis Holdings in a trademark infringement, passing off and copyright infringement action relating the name and logo of ‘PORTCULLIS’.
- Acted for Sri Paandi Restaurant in a trade mark infringement claim against several defendant using the trade name ‘Sri Paandi’.
- Assisting GIVI with an enforcement exercise involving conducting an internet monitoring programme.
- Instructed by Mega Fortris to assist with its counterfeiting activities in Malaysia.
Rahmat Lim & Partners' full-service intellectual property team 'provides creative solutions' that are 'cost-effective'. The group handles a range of contentious and non-contentious matters and counts Pfizer, The Walt Disney Company and Mars Incorporated among its clients. With 'vast experience' practice head Pauline Khor is 'a great asset as a legal adviser' both in litigation, on advising on anti-counterfeiting and anti-piracy programmes and management of portfolios.
‘The team is great in investigation and raid action and has strong connection with local enforcement agencies.‘
‘The lawyers are always accessible and provide quality legal advice promptly.‘
‘Pauline Khor is great in expertise and personality.‘
‘They provide creative solutions to cater to your business needs, the lawyers are always accessible and provide quality legal advice promptly.‘
USG Boral Building Products Sdn. Bhd.
The Walt Disney Company
Mars Incorporated & Wm. Wrigley Jr. Company
H-D U.S.A., LLC
Kimberly-Clark Worldwide, Inc.
U Mobile Sdn Bhd
Dunlopillo Holdings Sdn Bhd
SCG Group of Companies
DSM IP Assets B.V.
- Instructed by new client USG Boral Building to assist with the global coordination of its trade mark portfolio.
- Defended Sime Darby Foods and Beverages Marketing in a trade mark infringement, passing off and unfair competition action brought by New Zealand Milk Brands and relating to related to the use of the ‘PURE COW BRAND’ trade mark.
- Assisting MCM Holdings AG with an ongoing anti-counterfeiting programme which has included conducting nationwide blitz raid actions.
- Advised Harley-Davidson U.S.A. on the issuance of cease and desist letters to infringers throughout East and West Malaysia for the unauthorised use of the famous ‘HARLEY-DAVIDSON’ name and trade marks.
- Advising Joey Yap Group of Companies on the unauthorized sale and/or offer for sale of pirated Joey Yap books on popular online marketplaces and document sharing sites.
The intellectual property team at Raja, Darryl & Loh has experience across protection, enforcement, commercialization and management of rights, and has recently been particularly active in contentious trademark matters. Chew Phye Keat handles corporate and commercial intellectual property matters, while Yvonne Ong focuses on prosecution and enforcement. Dispute resolution partner Hon Leng Choon has IP litigation experience.
Phye Keat Chew ; Yvonne Ong
Other key lawyers:
JT International SA
Infineon Technologies AG
Giorgio Armani SpA
Axiata Group Berhad
Duopharma Biotech Berhad
Celcom Axiata Berhad
- Assisted Duopharma Biotech in a rebranding exercise across the ASEAN region following its demerger from the Chemical Company of Malaysia Berhad group.
- Advised Centara International Management on a non-use cancellation action filed at the High Court against the mark ‘CANTARA’ which was owned by K.L. Airport Hotel Sdn Bhd.
- Defending Vitally in a copyright infringement action brought by Alusti.
- Defending Petrofac E&C in a patent infringement claim brought by Kingtime International Limited and Gryphon Energy relating to technical aspects of the offshore oil and gas facility.
Shook Lin & Bok's intellectual property team is known predominantly for its expertise in contentious matters and also has the capabilities to advise on filing and prosecution and enforcement of rights, as well as on licensing and franchising. Managing partner Michael Soo heads the team and focuses on enforcement and civil litigation, while Wendy Lee Wan Chien handles advisory and prosecution of trade marks, patents and industrial designs and trade mark opposition proceedings.
Other key lawyers:
Tay & Partners intellectual property practice advises its clients across a full range of issues, including registration, enforcement, litigation and transactional matters. Lin Li Lee focuses on contentious matters and heads up the IP practice, along with the data protection and technology, multimedia and telecoms practice groups. Bee Yi Lim handles a range of commercial and contentious matters, and assists several clients with trade mark portfolio management.
Other key lawyers:
Celltrion Healthcare Co., Ltd.
Kingtime International Limited
Monash IVF Pty Ltd
Beijing Pony Media Culture Development Co., Ltd.
Costa International Limited
Whitbread Group PLC
AAPC Singapore Pte Ltd
Alpha Max Group Limited
Melco Crown Entertainment and MCE (IP) Holdings Limited
Etika Sdn Bhd
UEM Sunrise Berhad
Nusajaya Rise Sdn Bhd
- Representing Kingtime International in a patent infringement claims against Petrofac E&C and Petronas Carigali.
- Defending Celltrion Healthcare in an infringement claim brought by F. Hoffman La-Roche relating to its second medical use patent for a biosimilar product used to treat cancers and rheumatoid arthritis.
- Defending Monash IVF in an application by Monash University to expunge three of the client’s registered trade marks containing the word ‘MONASH’ in relation to among others, in-vitro fertilisation services.
The intellectual property team at Gan Partnership is particularly strong for trade mark litigation and recently defended Apollo Food Industries in an infringement claim brought by Mondelez Europe relating to its Toblerone trade mark. Foong Lam Tai heads up the practice and counts Genting Group, UMW Holdings and Maxis Berhad among his clients. The team has been greatly boosted by Bahari Yeow and Zhi Jian Lim who joined in July 2020 from Lee Hishammuddin Allen & Gledhill.
UMW Holdings Berhad
Maxis Mobile Services Sdn Bhd
Digi Telecommunications Sdn Bhd
Tung Shin hospital
Apollo Food Industries (M) Sdn Bhd
Hap Seng Consolidated Berhad
Fipper Marketing Sdn Bhd
Drinks Kingdom Sdn Bhd
LWE Limited IP
- Defended Apollo Food Industries in a trade mark infringement claim brought by Mondelez Europe relating to its registered trade mark for Toblerone.
- Represented Hai-O Enterprise in a claim brought Chern Chang Chan Holdings for alleged infringement of its ‘DOUBLE PAGODA’ cooking wine trade mark.
- Instructed by Comcast Corporation to advise of regulatory issues relating to its proposed acquisition of 21st Century Fox’s Assets.
Boutique firm Josephine, L K Chow & Co is 'an outstanding law firm that thinks outside of the box'. It is highlighted for its expertise in advising on enforcement and litigation of intellectual property rights. The group's experience spans advising on enforcement of copyright, industrial design, trade marks and patents, as well as software license compliance. Key names of note include 'knowledgeable and trustworthy' Khaik Kew Peh and experienced litigator Cyndi L K Chow.
‘The team consists of exclusively professional, experienced, knowledgeable and caring lawyers. Their boutique style approach make us feel at peace and the matter is with good hands.‘
‘Our working experience with Khaik Kew is amazing. He is able to simplify complicated issues and communicate effectively to his clients.‘
‘They are renowned in the industry and relied heavily by most software publishers for IP protection work.‘
‘They are also very flexible in terms of fee arrangements which is very appreciated due to resource constraints.‘
St John Ambulans Malaysia
HSL Plastic Sdn Bhd & TNL Plastic Manufacturer Sdn Bhd
Ho Shen Lee (M) Sdn Bhd & TNL Plastic Manufacturer Sdn Bhd
LVMH Perfumes and Cosmetics (Malaysia) Sdn Bhd
- Successfully represented St John Ambulans Malaysia in an appeal of a trademark infringement and passing off claim made against PJ Uniform.
- Defended Ho Shen Lee (M) Sdn Bhd and TNL Plastic Manufacturer Sdn Bhd in a patent infringement claim brought by Hong Yik Plastics, and was successful in invalidating the claimants patent.
- Advised LVMH Perfumes and Cosmetics on the defense of a infringement claim brought by Shizens Cosmetic Marketing relating to its registered ‘Lip Tattoo’ trade mark, as well as in a counterclaim to expunge the plaintiff’s registered trade mark.
Miranda & Samuel
Miranda & Samuel is a boutique firm that handes registration, commercialization and enforcement of trade marks, patents and industrial designs, It also has experience advising on franchising and licensing of rights, as well as in related litigation; managing partner George Miranda is particularly strong on franchising.
Naqiz & Partners
Naqiz & Partners' intellectual property team has particular expertise advising on strategic licensing, franchising, and other transactional matters, its experience also extends to advising on contentious matters. Brian Lew heads up the practice which includes associate Imaduddin Suhaimi.
Other key lawyers:
- Advised Smart Sun Resources on brand licensing, hotel management and hotel technical assistance agreements with an international hotel group based in Singapore.
- Advised NGC Energy on protection of confidential information and the registrability of new technology.
- Advised Bamboo Channel on its expedited examination for their invention under the Patents Act 1983 and applied for the grant of patent thereof.
RamRais & Partners
Specialised firm RamRais & Partners – which also handles a range of general litigation and conveyancing instructions – has a strong reputation for intellectual property instructions. The team handles a full range of issues from registration of patents, trade marks, and industrial designs, to licensing and litigation. Managing partner Caroline Francis and Shashila Weladavi Acharige are the names to note for transactional and contentious matters respectively.
Other key lawyers:
Litigation boutique Sreenevasan has strong capabilities acting in contentious intellectual property matters. Janini Rajeswaran has experience advising on trade mark, copyright, and patent infringements, as well as in passing-off and breach of confidentiality claims. Commercial litigator Ambiga Sreenevasan is the name to note.
Zain & Co
Zain & Co has experience assisting clients with intellectual property aspects of corporate transactions, as well as advising on commercial, franchising and licensing matters. Corporate partner Salwah Shukor heads up the practice.
‘Combined their corporate practice with their intellectual property practice, giving it both context and a holistic approach.‘
Roots and Shoots Environmental, Wildlife Conservation and Humanitarian Society (affiliate of Jane Goodall Institute Malaysia)
Keystone Enterprises Sdn Bhd
- Acted for Keystone Enterprises Sdn Bhd and Alila Hotels and Resorts in trade mark infringement and passing proceedings.
- Advised Roots and Shoots Environmental, Wildlife Conservation and Humanitarian Society on intellectual property ownership issues relating to its grant from Yayasan Hasanah.