Malaysia

Malaysia’s accession to the Madrid Protocol may well have to wait another year, as the country has yet to ratify the Trans-Pacific Partnership. Despite the frustrations of external forces, practitioners are enjoying a healthy influx of filings and the country’s IP courts remain busy hearing disputes across a wide range of industries; however, the traditional preponderance of spats between foreign and local entities has given way to an increasing number of purely domestic battles. Meanwhile, Malaysian trademark lawyers continue to benefit from growing IP awareness in the country.

Firms

1
Shearn Delamore & Co
Wong & Partners
2
Shook Lin & Bok LLP
Wong Jin Nee & Teo
ZICO IP
3
Rahmat Lim & Partners
Raja Darryl & Loh
Ram Rais & Partners
Rahmat Lim & Partners
Clients are in safe hands with corporate outfit Rahmat Lim & Partners. Flanked by robust commercial law divisions and strengthened by associations with leading Singaporean firm Allen & Gledhill, the trademark team is a polished performer in the courtroom and a shrewd operator at the negotiating table. Deftly practising across the contentious/non-contentious divide, Pauline Khor is the driving force behind much of its success. A staunch advocate for both local players and major multinationals, she is a familiar face at the High Court and a dab hand at cross-border infringement cases.
Raja Darryl & Loh
A prime address for foreign and domestic brand owners alike, Raja Darryl & Loh never rests on its laurels and is always au fait with the latest market trends. Blending regional commercial nous with on-point legal acumen, the battle-tested brand protection team is a top choice for clients seeking holistic advice. The broker of myriad lucrative franchising deals, Phye Keat Chew is best known for his sage management of multifaceted IP portfolios.
Ram Rais & Partners
Rights holders can rest assured under the considered guidance of Ram Rais & Partners. The esteemed full-service firm has consistently demonstrated its flair for intellectual property over its four decades in business – whether in litigation, enforcement or prosecution, it always achieves highly advantageous results. Percipient firm head Caroline Francis wins plaudits among peers for her strategic vision on franchising and licensing matters.
Shearn Delamore & Co
The branding services on offer at commercial outfit Shearn Delamore are truly top of the line. Its diverse team counsels a wide range of clients across the trademark spectrum, ensuring watertight protection of their rights at every turn. A go-to for luxury retailers seeking proactive anti-counterfeiting support, it also boasts a sterling track record in the pharmaceutical and heavy industry fields. Few can match the versatility and insight of IP head Karen Abraham, a fierce enforcer who never loses sight of patrons’ long-term goals. Jyeshta Mahendran keeps the engines running at full throttle in the prosecution department and sits on several international anti-counterfeiting and non-traditional mark committees. Indran Shanmuganathan makes his WTR 1000 debut this year: “Lawyers of his calibre are usually swamped with cases, but he never neglects clients’ needs and concerns. He always delivers what he has committed and promised.”
Shook Lin & Bok LLP
Contentious champion Shook Lin & Bok has deep roots in the Malaysian IP arena. With strong ties to the Singaporean market through its regional network, the Kuala Lumpur office is a firm favourite among international brand owners seeking ironclad coverage across Southeast Asia. Head of the IP and IT department and consummate litigator Michael Soo draws effusive praise for his unparalleled breadth of knowledge on all things intellectual property. HIs standing in the industry was reinforced by a previous stint as president of the Malaysia Intellectual Property Association. Boasting extensive cross-border links through its Lex Mundi membership, corporate outfit SKRINE enjoys a place among Malaysia’s trademark elite, thanks to its “sublime commercial insight and unstinting dedication to clients”. IP division chief Charmayne Ong Poh Yin’s in-depth IT and e-commerce know-how pays dividends for internationally oriented clients seeking to take their brands to new heights in the digital age. Excelling on prosecution and transactional briefs, the firm is an equally potent force in the courtroom. Contentious maestro Guan Huat Khoo fronts the IP dispute resolution team and impresses for his “calm and collected, yet persuasive and tireless” pursuit of clients’ interests. The discerning and unflappable Tay & Partners ascends to the silver tier in this year’s WTR 1000. Tech-savvy patrons are at a particular advantage, thanks to its cutting-edge approach to emerging business platforms and strategies. Its licensing work for premier hotelier Accor Group and representation of regional airline Scoot in a fraught infringement spat highlight its sure command of tricky multi-jurisdictional instructions. The group’s continued rise can largely be attributed to the efforts of tenacious department head Lin Li Lee. “Time is always a factor and things don’t always go quickly in the Malaysian system, but Lin Li gets you over the hurdles and improves your perspective on the whole process.” Bee Yi Lim enters the guide as a dynamic negotiator operating at the forefront of developments in IP strategy.
Wong & Partners
“If you have a complex IP matter, Wong & Partners has the skills not only to help you through it, but also to put you in a better position than before.” The Baker McKenzie member has gone from strength to strength during its 18 years in the brand protection business, earning a lofty reputation on the back of its adroit handling of headline-grabbing litigation, inimitable strength in the anti-counterfeiting sphere and forward-thinking trademark advice. Spearheading IP and dispute resolution efforts, Kherk Ying Chew is the perfect choice for firms with global registration needs: “Few others in Malaysia have the same level of insight and care.” Also a redoubtable enforcer, she has nearly 30 years of experience under her belt and sits on numerous influential international committees. Global blue-chips and local titans alike benefit from the dedication of anti-counterfeiting crusader Brian Law, whose enforcement prowess is strengthened by previous in-house experience.
Wong Jin Nee & Teo
A deep pool of expertise and a highly personalised approach have long been hallmarks of Wong Jin Nee & Teo. “It is really hard to find the same kind of care at one of the bigger firms. Clients’ portfolios are always on their minds.” The group is treasured by household names in the fashion world and major regional industrial players alike; recent contentious highlights include victories for YKL Engineering and Castrol. The practice is anchored by founding partners Jin Nee Wong and Bong Kwang Teo. Wong exudes wisdom on tech-heavy brand protection engagements, while Teo is a go-to practitioner for food and beverage and consumer protection matters.
ZICO IP
IP protection and enforcement are central pillars at ZICO IP, which is rapidly becoming one of Southeast Asia’s premier destinations for brand owners. It has expanded significantly throughout the region, offering a joined-up service to international heavyweights such as Nestlé, Pandora and San Pellegrino. Silver-tongued litigator Linda Wang has been an engine of the division’s success, bringing a refined yet diverse skill set to bear on complex contentious briefs. Well-rounded brand protection guru Siew Ling Su carefully cultivates successful trademarks from inception to enforcement. Recent arrival Boo Seng Ong makes his WTR 1000 debut this year; he knows what it takes to shepherd licensing and franchising negotiations to a successful close.

Agencies

Famed for its technical prowess in the patent space, Advanz Fidelis dispenses equally prudent counsel in the trademark sphere. Excelling across the gamut, it places clients’ commercial ambitions front and centre of its thinking. Chief executive officer Jern Ern Chuah has a talent for conjuring up creative and practical solutions to disputes, while also proving formidable at the negotiating table. Head of trademarks Pui Keng Lim is a welcome addition to the WTR 1000; she takes a vigilant stance on oppositions and litigation preparation measures while also sagely managing complex portfolios. A model for value-added services and reliability, Henry Goh stands tall as the leading IP agency in Malaysia; the technical and organisational talents of its team resonate with a host of prestigious companies, including global juggernauts such as Caterpillar. Multinationals and start-ups alike flock to prosecution head Azlina Khalid for her invaluable counsel. Sau Yin Tham and Eng Leong Lim are worthy inclusions in the WTR 1000 rankings. As general manager and executive director, Tham boasts unparalleled registration know-how and sets a stellar example to the firm’s junior agents; while Lim is always two steps ahead of market developments when devising trademark strategies.
KASS International
Malaysian institution KASS International stands out from the pack in the Southeast Asian brand protection space. A favourite among locals, the crowd-pleasing agency is also a trusted guide to major international players. “Its team works hand in hand with you on the strategy and constantly updates you on the market and legal changes you might have missed.” Founder P Kandiah is an IP mover and shaker who masterminds innovative commercialisation strategies for brand owners across myriad industries. Trademark division lead Geetha Kandiah’s academic and professional experience in Europe gives her multi-jurisdictional insight that is highly valued by clients with cross-border interests. UK-headquartered prosecution stalwart Marks & Clerk provides domestic clients with the expertise required to exploit global markets to the fullest. It is likewise a favourite among multinationals and regional powerhouses seeking measured advice and flawless execution at world-class standards. “There is a sense of relief you get with Marks & Clerk. It has been around the block more than anyone.” Non-executive director Gerald Samuel’s deep legal wisdom is prized by household names such as Dyson and numerous marquee brand owners throughout the region.
Mirandah Asia
Few IP specialists have as intimate an understanding of Southeast Asia’s different markets and legal nuances as Mirandah Asia. The closely knit group maintains numerous offices throughout the region, but its Kuala Lumpur contingent shines particularly brightly. The set’s commercial bent and tailored services are particular selling points: “Mirandah has experts in all the major Southeast Asian branches, but you get the responsiveness of a single practitioner firm.”

Individuals: enforcement and litigation

Karen Abraham - Shearn Delamore & Co
Kherk Ying Chew - Wong & Partners
Guan Huat Khoo - SKRINE
Michael Soo - Shook Lin & Bok LLP
Linda CL Wang - ZICO IP
Pauline Khor - Rahmat Lim & Partners
Brian Law - Wong & Partners
Indran Shanmuganathan - Shearn Delamore & Co
Ambiga Sreenevasan - Sreenevasan
Bong Kwang Teo - Wong Jin Nee & Teo

Individuals: prosecution and strategy

Kherk Ying Chew - Wong & Partners
Jern Ern Chuah - Advanz Fidelis Sdn Bhd
Caroline Francis - Ram Rais & Partners
Geetha Kandiah - KASS International
P Kandiah - KASS International
Azlina Khalid - Henry Goh & Co Sdn Bhd
Phye Keat Chew - Raja Darryl & Loh
Lin Li Lee - Tay & Partners
Bee Yi Lim - Tay & Partners
Eng Leong Lim - Henry Goh & Co Sdn Bhd
Pui Keng Lim - Advanz Fidelis Sdn Bhd
Jyeshta Mahendran - Shearn Delamore & Co
Boo Seng Ong - ZICO IP
Pauline Khor - Rahmat Lim & Partners
Gerald Samuel - Marks & Clerk (Malaysia) Sdn Bhd
Siew Ling Su - ZICO IP
Sau Yin Tham - Henry Goh & Co Sdn Bhd
Linda CL Wang - ZICO IP
Jin Nee Wong - Wong Jin Nee & Teo
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Issue 67