Mr Indran Shanmuganathan > Shearn Delamore & Co > Kuala Lumpur, Malaysia > Lawyer Profile

Shearn Delamore & Co
7th Floor Wisma Hamzah-Kwong Hing
No. 1 Leboh Ampang
KUALA LUMPUR
50100
Malaysia

Work Department

  • Intellectual Property
  • Personal Data Protection & Privacy Laws
  • Competition Law & Antitrust

Position

Partner since 2005

Career

Indran’s practice largely involves seasoned IP litigation relating to Trademark, Copyright, Patent and Industrial Design litigation. Indran regularly appears as Lead Counsel in complex and novel cases some of which now serve as landmark IP cases which encompass cutting edge IP issues in the High Court, Court of Appeal, and the Federal Court (Apex Court). He has also been sought out to do Counsel work for both IP and civil commercial litigation matters.

Indran was the Lead Counsel in a historic landmark case [MERCK SHARP & DOHME GROUP & ANOR v. HOVID BHD [2019] 9 CLJ 1] which successfully resulted in the extremely rare occurrence of the Federal Court overturning one of its previous decisions. Given that this feat has been achieved only 6 times in Malaysia’s history since 1967, he stands as the first IP lead counsel in the first IP case before the Federal court in Malaysia to achieve this credential He has also been recognised and listed as one of the “World’s leading IP strategists”. Indran has been accorded the accolade of “Asialaw Regional Award 2019 for Outstanding Practitioner in Malaysia.” He has advised and litigated on IP issues with major industry players from a varied cross section of industries such as major renowned worldwide sporting bodies, pharmaceutical companies, automotive companies, hotels chains, restaurants and various consumer product companies on IP rights and disputes.  He continues to be actively involved in IP enforcement and anti-counterfeiting work often collaborating with government bodies.

Indran’s varied non contentious IP portfolio often sees him sought out for tailor made niche advisory services to clients which broadly include transactional work, IP registration, due diligence exercises, implementation of IP protection strategies, advisory, drafting and regulatory processes relating to various IP, IT, E-commerce, Tech and Franchise Agreements, Media Broadcasting (Advertising) and the Communication and Multimedia Act amongst others. His experience further extends to Pharmaceutical and Food Advertising, Domain Name Disputes, licensing, sponsorship, and merchandising matters. He also advises on matters relating to Personal Data Protection & Privacy Laws and on Competition Antitrust related work to compliance including the preparation of competition policy, competition dispute resolution.

Languages

English, Malay

Memberships

  • Council Member, Asian Patents Attorneys Association of Malaysia (APAA)
  • Member of Governing Council, Asean Legal Information Centre (Asean LIC)
  • Member, Malaysian Bar
  • Member, The Honourable Society of Lincoln’s Inn
  • Member, International Bar Association (IBA)
  • Member, International Trademarks Association (INTA)
  • Member, Malaysian Intellectual Property Association (MIPA)
  • Member, Pharmaceutical Trademarks Group (PTMG)
  • Member, The Honourable Society of Lincoln’s Inn Alumni Association, Malaysia
  • Member, University of Leicester Alumni

Education

  • LL.B (Hons), University of Leicester
  • Barrister-at-Law, Lincoln’s Inn
  • Advocate & Solicitor, High Court of Malaya
  • Advocate & Solicitor of the Supreme Court of the Republic of Singapore
  • Trademark Agent and Industrial Design Agent
  • Geographical Indications Agent

Leisure

Publications:

  • Author: “Trademarks Act 2019 with Overview by Indran Shanmuganathan” Sweet & Maxwell (2020).
  • “The Rise and Fall of SKB Shutters Case”, Legal Era Publication November 2019
  • “Merck Finally Shuts the Door of SKB Shutters”, Managing IP-IP Stars, October 2019
  • John Ambulans Malaysia v PJ Uniform Sdn. Bhd. (SAHC 22NCvC-148-02/2013) Civil Appeal
  • No. B-02(NCVC)(W)-2188-11/2016)
  • “In Ratio & Obiter: Lessons from Liwayway Marketing Corporation v. Oishi Public Company Limited”, Asia IP, 2017
  • Co-author Trademark Litigation Handbook – Thomson Reuters, 2017
  • “Automobile Component Parts: Registrable Design or Not?” Asia IP, 2015
  • “Are Cancellation Actions still a viable option?” Asia IP, 2013
  • “Registered User Conundrum”, Managing IP, 2013
  • Co-author Trademark Litigation Handbook – Thomson Reuters, 2013
  • “When Fame is Not Enough”, Managing IP, 2010
  • “Use it or Lose it” Managing IP, December 2009.
  • “To Cancel or Not to Cancel?” Asia IP Focus, October 2009.
  • The Territoriality of Goodwill: The Way Forward in Claims in Passing-off Asia IP 2009.
  • “Internet Piracy-Copyright Infringement and Adequacy of Malaysian Law” The Malaysian Accountant June 2007

Lawyer Rankings

Malaysia > Intellectual property

(Leading individuals)

Indran ShanmuganathanShearn Delamore & Co

The IP team at Shearn Delamore & Co is led by Karen Abraham, described as ‘the best there is in Malaysia and the region’. The team stands out for its work on Malaysia-based trademark and patent prosecution; uniquely, it manages large trademark portfolios of international clients, including Astro, Petronas and Pfizer, in addition to various global technology companies. The practice advises on angles of appropriate protection and enforcement of trademarks. Further, it deals with registration and protection of domain names issues and the enforcement of industrial design protection. Indran Shanmuganathan has expertise working with government bodies to enforce anti-counterfeiting laws. Zaraihan Shaari retired in December 2021.