Malaysia

The passing of the Trademarks Bill 2019 by Parliament on 2 July 2019 is big news for Malaysia. Replacing the Trademarks Act 1976, the new law is written in “clearer and simpler language” and will bring Malaysian trademark legislation into line with that of the United Kingdom and Singapore by permitting the filing of multi-class applications, non-tradition marks and collective marks. Most significantly of all, it will also bring about Malaysia’s accession to the Madrid Protocol.

Firms

  • Lee Hishammuddin Allen & Gledhill
  • Shearn Delamore & Co
  • SKRINE 
  • Wong & Partners (member firm of Baker McKenzie International)
  • Rahmat Lim & Partners
  • Shook Lin & Bok LLP
  • Tay & Partners 
  • Wong Jin Nee & Teo
  • Chooi & Company + Cheang & Ariff
  • Christopher & Lee Ong
  • LAW Partnership
  • Raja, Darryl & Loh
  • RamRais & Partners
  • ZICO IP

Chooi & Company + Cheang & Ariff

Full-service law firm Chooi & Company + Cheang & Ariff is an “IP powerhouse providing a first-rate, A-to-Z trademark service”, whose attorneys are “happy to go the extra mile to resolve any issues that affect client satisfaction”. Cindy Goh Joo Seong is a specialist in IP and commercial litigation, although she takes on the full range of IP and trademark work with verve. Currently chair of the Malaysian Bar IP Committee, she is a highly respected figure in the industry.

Christopher & Lee Ong

Fast attracting notice as a “fine and client-friendly” option for IP work, the three-partner Christopher & Lee Ong is riding a wave of effusive client feedback to debut in the WTR 1000. The firm – whose client base is composed of mostly large and multinational corporations – tends to the trademark portfolios of such domestic giants as Top Glove, TYL Communications and Retirement Fund Incorporated, most recently adding a global food and beverage company to its glowing client list. “Versatile operators” Sri Sarguna Raj and Kim Poh Ng embody the side’s “diligence and superb quality throughout”. “Highly professional,” the pair display an admirable degree of transparency in their work and correspondence with clients: “their ability in keeping clients abreast of pertinent updates to their files is simply astonishing”.

LAW Partnership

Fully plugged into the Asian, European and US network of Eversheds Sutherland offices, LAW Partnership adopts “a pragmatic approach to render advice that marries robust understanding of the law with strong ethical and regulatory compliance”. A brand-new set up that began operations in January 2019, the firm has already amassed a considerable client base that includes a slew of multinational companies. Regional head of IP Brian Law practises across Brunei, Singapore and Malaysia. Formerly of Wong & Partners, he is a “friendly and resilient lawyer with incisive commercial acumen”. Cheah Chiew Lan is a brands guru with substantial experience in commercial IP as well as a flair for trademark prosecution and enforcement; she is also an authority on domain name issues, having played an important role in setting up Domain Name Dispute Policy, Rules and Supplemental Rules for MYNIC – the agency responsible for the ccTLD ‘.my’. Co-chair of the Malaysian Bar Council’s IT committee, Suaran Singh Sidhu is a fount of knowledge in IP litigations and IT law.

Lee Hishammuddin Allen & Gledhill

The “first-rate” Lee Hishammuddin Allen & Gledhill debuts in the WTR 1000 at the apex of the firm rankings as it “leverages its unparalleled attentiveness, commitment and enthusiasm in client work to set the gold standard in cost-effectiveness, expertise and commercial acumen for top-tier law firms”. Clients are unreserved when singing the firm’s praises. “Its attorneys go the extra mile in order to secure the most favourable outcomes. Amazing work quality aside, they are extra careful around situations of potential conflict of interest. With a detailed understanding of the client’s business and how various areas of law are interconnected, they show a high degree of agility and creativity, with robust expertise in industry-specific regulations and consumer protection to boot.” This excellence permeates through client communications as well. “LHAG is always understanding when urgent advice is required and always work with clients to find mutually convenient deadlines.” Bahari Yeow Tien Hong and Zhi Jian Lim are the kind of lawyers who “open to discussing legal arguments and ideas with clients and render well-considered and commercially attuned advice”. “Their ability in capturing and distilling complex technical notions into plain language makes it easy for clients’ easy comprehension and decision-making.” A well-respected figure in Malaysian IP circles, Yeow is an impressive litigator who is always available, while Lim an efficient and effective IP counsel. Transactional briefs go to Eunice Chan, “a pragmatic and responsive lawyer who is easy to deal with”.

Rahmat Lim & Partners

Rahmat Lim & Partners is the Malaysian associate firm of Singapore’s Allen & Gledhill. It has struck a chord with rights holders for its “superb work quality”, while “healthy working relationships with the enforcement agencies” and investigators have led to some excellent outcomes in challenging, anti-counterfeiting raid actions. Pauline Khor is the face of the firm – her prosecution and enforcement nous is widely lauded among her peers.

Raja, Darryl & Loh

The IP team at full-service law firm Raja, Darryl & Loh is a stalwart on the Malaysian IP scene. Ably and nimbly cooperating with the dispute resolution and corporate and commercial teams, the set provides an A-to-Z trademark service, characterised by responsiveness and excellence. Phye Keat Chew is an esteemed practitioner who co-founded the Malaysian Intellectual Property Association – she is also adept when it comes to competition matters.

RamRais & Partners

RamRais & Partners is a small but long-established law firm with a focus on intellectual property. Managing partner Caroline Francis is a popular choice for trademark briefs of all stripes, as well as an active participant in extra-curricular activities. Sitting on the Malaysian Intellectual Property Association’s executive committee, she is also councillor and honorary treasurer of the Asian Patent Attorneys Association.

Shearn Delamore & Co

Shearn Delamore & Co owes its pre-eminence to its “rich experience, sterling track record and total professionalism” and the ease with which clients can access its lawyers. One of the top IP advocates in the country, Indran Shanmuganathan is a top choice for landmark litigation. He often teams up with fellow litigator Michelle Loi, who currently presides over the Licensing Executives Society Malaysia. Timothy Siaw is an authority on life sciences and patents with superb expertise in franchising and anti-counterfeiting; he is vice-chair of the International Technology Association’s e-commerce law committee. Janet Toh is a specialist in franchising, advertising, regulatory approvals for food, cosmetics and pharmaceuticals, while Jyeshta Mahendran is a versatile adviser who often works with the corporate team on transactions. Finally, “highly experienced brands lawyer” Karen Abraham steers the IP practice with a steady hand.

Shook Lin & Bok LLP

Famed for its illustrious, century-long history, Shook Lin & Bok is a superb choice for trademark and soft IP instructions. The firm not only has a significant licensing and franchising practice, it also offers a complete suite of soft IP capabilities. Managing partner and litigation maestro Michael Soo is an IP sage with over three decades’ experience, making him one of, if not, the most experienced IP practitioners in Malaysia.

SKRINE 

“Esteemed law firm SKRINE unceasingly impresses clients with superior services.” Helming the IP department is Charmayne Ong Poh Yin, a non-contentious sage who brings an abundance of commitment and enthusiasm to client work and the IP team. Focusing on portfolio management, her remarkable sectoral knowledge ranges from food and beverages to technology through to manufacturing. Newly ranked Leela Devi Baskaran is the commercial guru-in-residence, whose specialities include setting up master franchise and licensing agreements. At SKRINE, there is also substantial firepower available when it comes to enforcement and litigation. A litigator who has honed his craft for 30 years, Guan Huat Khoo commands immense respect from his peers. He broke new ground in Chatime v Tealive, securing an injunction for La Kaffa International Co Ltd from the Court of Appeal against Loob Holding Sdn Bhd – the first appellate decision expounding on Section 27 of the Franchise Act 1998. Rising star Melissa Long played a pivotal role in this widely publicised dispute. During High Court damages proceedings, WTR 1000 debutante and fierce IP litigator Pei Yee Kuek represented Syarikat Faiza in successfully claiming RM4.16 million from Faiz Rice Sdn Bhd over trademark and copyright infringement.

Tay & Partners 

The two-partner IP department at Tay & Partners is ideal for clients and foreign associates on the lookout for a service that combines technical excellence and client focus. The two partners – Bee Yi Lim and Lee Lin Li – are highly lauded for their “straightforward communications”, which inspire total client confidence. As one client espouses, “I am safe in the knowledge that my instructions are being well-taken care of and there is no need for me to check for upcoming deadlines. What Li offers me is responsiveness, innovative yet pragmatic solutions and a thorough understanding of Malaysian trademark legislations.”

Wong & Partners (member firm of Baker McKenzie International)

The “high-end” Wong & Partners provides a bean-to-cup trademark service to its illustrious client base, which includes Silicon Valley tech giants, international real estate companies and global fashion houses. Access to the sprawling Baker McKenzie network is a definite attraction, while the prodigious on-the-ground expertise – guaranteed by the preeminent Kherk Ying Chew – keeps clients coming back for more. Leading both the IP and dispute resolution practices, she is a reliable port of call for every IP conundrum. Her strong commercial acumen has ensured her a steady flow of licensing and licensing dispute work of late. Building upon his rich in-house experience, Tze Lin Chong plays a key role in the firm’s enforcement campaigns.

Wong Jin Nee & Teo

An emblem of confidence, Wong Jin Nee & Teo has been tackling the full range of IP matters with verve for the past 15 years. Litigation practice head Bong Kwang Teo is highly sought after for his contentious nous. Staunch enforcer of trademarks and consummate IP strategist, Jin Nee Wong is a certified IP valuer with a knack for monetising IP assets.

ZICO IP

The only IP law firm with an all-ASEAN presence, “ZICO IP is relatively young but incredibly vibrant”. Linda Wang is the captain of the ship; having spent over 20 years at the IP and technology coalface, she is a force to be reckoned with in IP litigations. Boo Seng Ong is another hot-shot litigatorn – also an adept adviser on corporate transactions, he is a ready source of commercially attuned contentious nous. Siew Ling Su is a savvy choice for interested parties in need of advice on franchising and the full IP lifecycle.

Agencies

Agencies

Advanz Fidelis IP Sdn Bhd 

Operating as a standalone entity under the Australian holding company QANTM Intellectual Property, Advanz Fidelis has been garnering much positive attention in the competitive Malaysian IP landscape. Most recently it has expanded its team and acquired new direct clients from East Asia; for example, Korea’s CUCKOO Group of Companies. An extremely versatile adviser, trademark department leader Pui Keng Lim is well versed in the nuances of fulfilling the IP needs of clients of all sizes. Siew Ling Lee captains the legal and consulting division, which inspires confidence in clients in need of swift and decisive advice on office actions and enforcement issues. Founder and CEO Jern Ern Chuah is another useful contact for interested parties.

Henry Goh & Co Sdn Bhd 

The most prestigious IP agency in Malaysia, Henry Goh & Co is distinguished by the top-notch quality of work, as well as by “lightning responsiveness and superb cost-effectiveness”. As a result of highly targeted, annual business development trips to East Asian countries since 2017, Henry & Goh has substantially bolstered its clientele and network of Chinese and Japanese associates. Senior legal counsel Azlina Aisyah Khalid heads the prosecution practice with poise. A dab hand at pre-litigation advice, she is highly respected for her ability to straddle large caseloads of trademark opposition work. Trademark manager and business development strategist Eng Leong Lim is a smooth negotiator who often reaches win-win solutions on enforcement and infringement issues. General manager Sau Yin Tham is the senior trademark attorney in the team; her experience ensures the faultless operation of the prosecution practice.

KASS International

The service proffered by KASS International routinely “exceeds expectations”. In the words of one client, “KASS was able to effortlessly fix an urgent and complex trademark problem for me while keeping costs low. The team is accommodating, easy-to-work-with and puts in the extra effort to ensure all my questions are fully answered.” Geetha Kandiah is director of trademarks and designs who often shares her trademark expertise on national television.

Marks & Clerk

The Kuala Lumpur branch of the esteemed UK agency Marks & Clerk has been recording steady growth in both domestic and foreign-originating work. In addition to bread-and-butter trademark filings, the agency keeps a close eye on the marketplace for any products that might potentially infringe its clients’ rights. With his eponymous law firm, Gerald Samuel works closely with Marks & Clerk and recently secured a victory on behalf of Southeast Asian tyre manufacturer PT Gajah Tunggal Tbk in a High Court trademark infringement suit against Gan Lee Peng.

Mirandah Asia (Malaysia) Sdn Bhd

The full suite of trademark service is available at Mirandah Asia, which has been offering patrons pan-ASEAN coverage over the past three decades. The agency is most recommended for its regional-filing capabilities. Patrick Mirandah is a name to have on speed dial.

TEE IP SDN BHD

“Providing good-quality service at attractive rates”, TEE IP breaks into the WTR 1000 rankings this year on the back of its stellar clientele and favourable reviews. Managing some 7,000 trademarks at any one point, TEE IP files 2,000 new trademark cases a year for its clients, chiefly from Malaysia, Taiwan, Japan, Korea and China. For example, Huawei Technologies has been entrusting its Malaysian trademark applications to the firm, which “efficiently and responsibly manages IP portfolios with the utmost professionalism”. Under the careful management of CEO Lin Yik Tee, “the reputation of TEE IP has been growing surely and steadily”.

Other recommended experts

At Sreenevasan Advocates & Solicitors, Ambiga Sreenevasan is a one of Malaysia’s top lawyers and recipient of the US Secretary of State Award for International Women of Courage 2009, while co-founder Janini Rajeswaran is renowned as a distinguished IP lawyer. Foong Lam Tai of Gan Partnership earns a place in the WTR 1000 for his “regular appearances in trademark court cases”.

Individuals: enforcement and litigation

  • Karen Abraham - Shearn Delamore & Co
  • Kherk Ying Chew - Wong & Partners (member firm of Baker McKenzie International)
  • Guan Huat Khoo - SKRINE 
  • Indran Shanmuganathan - Shearn Delamore & Co
  • Michael Soo - Shook Lin & Bok LLP
  • Bahari Yeow Tien Hong - Lee Hishammuddin Allen & Gledhill
  • Pei Yee Kuek - SKRINE
  • Brian Law - LAW Partnership
  • Lee Lin Li - Tay & Partners
  • Zhi Jian Lim - Lee Hishammuddin Allen & Gledhill
  • Michelle CY Loi - Shearn Delamore & Co
  • Kim Poh Ng - Christopher & Lee Ong
  • Sri Sarguna Raj - Christopher & Lee Ong
  • Cindy Goh Joo Seong - Chooi & Company + Cheang & Ariff
  • Timothy Siaw - Shearn Delamore & Co
  • Suaran Singh Sidhu - LAW Partnership
  • Ambiga Sreenevasan - Sreenevasan Advocates & Solicitors
  • Bong Kwang Teo - Wong Jin Nee & Teo
  • Tze Lin Chong - Wong & Partners (member firm of Baker McKenzie International)
  • Melissa Long - SKRINE
  • Janini Rajeswaran - Sreenevasan Advocates & Solicitors
  • Gerald Samuel - Marks & Clerk
  • Foong Lam Tai - Gan Partnership

Individuals: prosecution and strategy

Individuals: transactions

  • Leela Devi Baskaran - SKRINE
  • Eunice Chan - Lee Hishammuddin Allen & Gledhill
  • Kherk Ying Chew - Wong & Partners (member firm of Baker McKenzie International)
  • Lee Lin Li - Tay & Partners
  • Kim Poh Ng - Christopher & Lee Ong
  • Janet Toh - Shearn Delamore & Co