Malaysia

With the passing of the Trademark Bill 2019, Malaysia joined the Madrid Protocol in 2019 as the 106th member. A replacement for the Trademarks Act 1976, the new law grants recognition to non-traditional trademarks, extending protection to shapes, sounds, scents and colour. With the introduction of multi-class applications, brand owners now benefit from a more streamlined process for administrative paperwork. In addition, the act strengthens protection for well-known and famous marks, while the government has set out new and more severe punishments for trademark infringers, who can be fined up to RM1 million, jailed for a maximum of five years or both. This is far more serious than the previous punishments of a RM5,000 fine for the first offence and up to RM30,000 for subsequent fines, a three-year jail term or both. The Malaysian IP Office is now bracing itself for a further increase in trademark applications – it received 123,856 applications between 2016 and 2018 and registered over 100,000 of these.

Firms

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

Chooi & Company + Cheang & Ariff

Acknowledged by peers for its “experienced IP department”, full-service law firm Chooi & Company + Cheang & Ariff handles all sorts of IP matters for an illustrious global and domestic clientele. “An experienced litigator well-versed in trademark laws,” Cindy Goh Joo Seong is not only often involved in high-stakes IP disputes in both the trademarks and patents space, the current chair of the Malaysian Bar IP Committee is a distinguished leader within the local industry. She recently represented Aizuddin Bin Abd Samad in a novel case – it was the first in Malaysia on constructive trust concerning trademark ownership – with the support of senior associate and WTR 1000 debutant Keong Ming Wai.

Christopher & Lee Ong

Established in 2003 through a merger between three Malaysian law firms, Christopher & Lee Ong takes a hands-on approach towards serving a multitude of well-known multinationals – including AirAsia, China Vanke and Barnes Group. With links to the Rajah & Tann Asia network, the general law practice easily handles the full spectrum of trademark problems. Clients are unreserved in singing the set’s praises. “Not only is the team excellent at building and cultivating a good working relationship, they know exactly what we need and provide exactly that and more.” IP captain Sri Sarguna Raj has built up “impressive expertise in all things intellectual property while maintaining his professionalism”. “His accurate and prompt legal advice is invaluable, and he speaks in a way that is detailed enough to educate but also so clear and concise that laymen can understand. I am personally impressed by the way Sri manages his team too – he is professional and pleasant with them, supervising without micromanaging and it is obvious they like and respect him as their leader.” Armed with nearly two decades of IP experience, Kim Poh Ng straddles the contentious and non-contentious divide effortlessly. Besides tending to the global trademark portfolios of YTL Corporation and Elite Gold, he represents his clients in IP disputes and advises on trademark licensing. Steven Cheok, who is involved in the firm’s China desk and takes charge of Chinese matters, deserves a mention too: “Steven is very approachable, able to provide a quick turnaround time and always able to provide practical solutions.”

LAW Partnership

Despite its young age – the firm was established in January 2019 – LAW Partnership is winning rave reviews from clients. “Experienced across the board in intellectual property and technology, media and telecoms, the team can assist with litigation and enforcement, as well as prosecution matters, by delivering quick, practical advice and engage with the relevant authorities for necessary actions.” “We enjoy working with them as they can discharge instructions seamlessly and effectively, offering good value for money and consistently delivering high-quality work in a time-efficient manner.” Not only can the firm draw upon international expertise through its association with multinational law firm Eversheds Sutherland, the side has just added Ameet Kaur Purba, president of the International Association for the Protection of Intellectual Property, Malaysian chapter, to further deepen its strength. Multinational companies, including Shiseido Americas Corporation, Procter & Gamble and Estee Lauder are already queuing up for assistance with all sorts of IP matters – LAW Partnership is the sole trademark agent in Malaysia for Mega Fortris Group. Whether it is Singapore, Malaysia or Brunei, Brian Law can do it all. “Brian really knows the ins and outs of our business, working seamlessly with us to achieve and create value with realistic, commercial, practical and innovative strategies.” “Brian takes the effort his client’s needs and frustrations and with that, he never fails to come up with creative and commercial solutions. He also has good relationships with the enforcement authorities and a good network of investigators, which definitely helps to increase chances of successful counterfeit actions in Malaysia.” Law recently assisted Shell with simultaneous enforcement raid actions that turned into one of the largest seizures for counterfeit engine oils for heavy machinery and vehicles. Taking the reins for contentious matters in the courtroom, Suaran Singh Sidhu represented Sri Paandi Restaurant Sdn Bhd in an IP dispute involving complex issues and novel points of law. Meanwhile, the past president of the Licensing Executives Society Malaysia Celia Cheah Chiew Lan handles everything in the prosecution space, as well as transactional work.

Lee Hishammuddin Allen & Gledhill

General law firm Lee Hishammuddin was founded in 1993, before combining with Singapore-based Allen & Gledhill in 2005 to form local giant Lee Hishammuddin Allen & Gledhill. As the only firm in Malaysia that is also part of international legal networks Multilaw and Interlaw, the team has unparalleled access to the expertise of more than 8,000 lawyers in over 150 cities. Well-versed in IP protection and licensing agreements, Eunice Chan takes charge of transactional matters and also offers advice on franchising and compliance issues.

Rahmat Lim & Partners

The Malaysian associate firm of Singapore’s Allen & Gledhill, Rahmat Lim & Partners may be a general law firm but its IP department stands strong, particularly for its expertise in IP enforcement. Its trademark prosecution practice is well-known for its excellent service too. Leading the IP and technology department is Pauline Khor, who works closely with household names in a diverse range of IP matters from trademark registration to implementing anti-counterfeiting programmes.

Raja, Darryl & Loh

For over five decades, full-service law firm Raja, Darryl & Loh has made responsiveness and proactiveness central to its legal services. Alongside the commercial department, the IP side takes pride in providing personalised advice to clients through its headquarters in Kuala Lumpur and Japan desk. From corporate, information and communications technology to IP matters, Phye Keat Chew has everything covered. After establishing the Malaysian Intellectual Property Association and serving as its president, he has now turned his focus to competition law.

Ram Caroline Sha & Syah

Known as RamRais & Partners for nearly half a century, the full-service law firm renamed itself Ram Caroline Sha & Syah in 2019. Clients of all shapes and sizes will find themselves in the safe hands of “experienced key personnel” to manage their IP portfolios and solve their problems. With over three decades of experience in the IP field, managing partner Caroline Francis offers sage advice on everything trademarks, with a particularly keen eye for licensing and franchising.

Shearn Delamore & Co

“An established full-service firm known for its IP practice,” Shearn Delamore & Co recently formed an alliance with Singaporean and Indonesian counterparts – Drew & Napier and Makarim & Taira S respectively – to offer international perspective through local expertise in the Association of Southeast Asian Nations (ASEAN) region through the Drew Network Asia. Foreign associates have nothing but high praise for “one of the top firms for high-quality trademark work in Malaysia”, which stands head and shoulders above its competitors in the Malaysian IP scene and is the only outfit with two gold-ranked IP litigators. Armed with three decades of experience, IP maestro Karen Abraham enjoys a fantastic reputation among peers and clients alike, not least for her “charismatic and impactful personality”: “Karen is our go-to person for trademark mark matters in Malaysia. She can handle it all and she handles it incredibly well. Her expertise, knowledge and ability to manage complex, multi-jurisdictional trademark projects is just the tip of the iceberg of her strengths, and I especially recommend her for her litigation and advocacy skills. She is a very safe pair of hands for all my trademark matters and she is an incredible person to work with.” “I enjoy working with Karen all the time. She always has our best interests at heart and her service is not just business to business but person to person. She knows me as well as my brand, going above and beyond to make sure I’m connected to all the best sources in the world. I do not just have the best IP lawyer but a friend in the business.” “An authority on all things intellectual property, with particular strength in litigation and anti-counterfeiting, Karen is also active in the global IP conversation.” “A dynamic expert in IP and TMT matters, Karen’s in-depth practical knowledge coupled with her vast experience in the IP industry makes her a valuable role model to young practitioners.” Her counterpart Indran Shanmuganathan is described as having “a sharp mind with good knowledge of the law”, as well as being “experienced and well known for IP litigation”. “A prominent counsel in the trademarks arena, Indran continues to be very down to earth, accessible and extremely prompt in his responses. His legal opinions are honest, and we know that he will provide excellent and trustworthy legal opinion with prompt service.” Shanmuganathan often collaborates with fellow litigator Michelle Loi – current president of the Licensing Executives Society Malaysia – in IP disputes, in which life sciences and patents expert Timothy Siaw is also active. On the non-contentious front, Janet Toh works on technology licence agreements, while Jyeshta Mahendran advises the likes of Astro Malaysia Holdings Berhad, Filtex Marketing and Nippon Paint on their extensive local and international trademark portfolios. “With historical knowledge of the business and rights we acquired, Jyeshta provided continuity of service that is first class throughout the acquisition. She is quick to respond and explains options clearly, bringing a professional and commercial approach to business. She knows how to work with both our central global legal function as well as our in-market operating company.”

Shook Lin & Bok LLP

A Singaporean law firm with a century’s experience in Malaysia, Shook Lin & Bok LLP has an extensive regional reach – from ASEAN to China and India. It recently added Jevon Louis to the Singapore team, further boosting its IP capabilities. Seated at the top of the enforcement and litigation table, managing partner Michael Soo has practised exclusively in intellectual property for more than three decades.

SKRINE

A stalwart on the Malaysian IP scene, SKRINE sets the gold standard for local IP firms. For an enviable list of blue-chip clients from leading domestic businesses to famous multinationals, the full-service practice can do it all. Not only does it boast a team of “experienced lawyers with a proven track record”, the firm’s connection with the Lex Mundi and Pacific Rim Advisory Council networks gives it an unparalleled ability to handle multi-jurisdictional matters. Charmayne Ong Poh Yin takes the helm of the IP department while managing IP portfolios. On the contentious front, the “established and respected litigator in intellectual property and trademarks” Guan Huat Khoo enjoys a fantastic reputation among his peers. “He is a good and capable opponent in contentious matters.” IP litigator Pei Yee Kuek works closely with senior associate Melissa Long on trademark disputes for local companies. In the non-contentious IP space, Teh Hong Koon makes her first appearance in the WTR 1000 for her recent involvement in prosecuting trademarks for foreign clients, whereas Leela Devi Baskaran has been active in IP commercial matters of late. Senior associate Joshua Teoh Beni Chris deserves a mention too: “Very calm and confident in his expertise, Joshua is extremely patient and walked through our case step by step. He gets really involved in our matters, and he is willing to listen and advise clients, never giving false hope but only facts.”

Tay & Partners

An emblem of confidence, Tay & Partners provides “good quality and quick responses” in its A-to-Z trademark services to a predominantly foreign clientele – many of which are also household names, including the Kraft Heinz Company, Lion Corporation and Guangdong Oppo. With a 16-strong IP team, the full-service law firm handles everything from advising on expanding trademark portfolios, brand protection strategies to drafting franchise agreements. As one client comments, “they give on-point, practice and very helpful advice with due consideration of existing laws, despite the problem being in a grey and novel area”. A well-rounded operator in contentious and non-contentious matters, Lee Lin Li takes charge of the IP department. With her colleague Bee Yi Lim, the pair manage trademark portfolios for the likes of Huawei Technologies and Etika Sdn Bhd, while assisting Shangri-La International Hotel Management Limited and Trek Bicycle Corp with local enforcement issues. Li is also particularly active when it comes to advising foreign companies about their franchise registration needs in Malaysia.

Wong & Partners (member firm of Baker McKenzie International)

Plugged into the sprawling Baker McKenzie network, Wong & Partners is partner to an enviable list of blue-chip clients from all over the world. Whether it is managing international trademark portfolios, implementing anti-counterfeiting programmes or negotiating licensing agreements, the side has it covered. An IP all rounder, Kherk Ying Chew holds the reins of the IP and dispute resolution departments. “Very capable and able, Kherk Ying has a sound knowledge of the law.”

Wong Jin Nee & Teo

Founded in 2005 by Jin Nee Wong and Bong Kwang Teo, the eponymous Wong Jin Nee & Teo is an IP boutique manned by 10 IP lawyers who work closely with Fortune 500 companies and domestic businesses to provide the full suite of IP services. Teo takes the lead on the contentious front – he recently acted as lead counsel for SkyWorld Development in a dispute against SkyWorld Holdings at the Kuala Lumpur IP High Court – while Wong oversees non-contentious matters. As a certified IP valuer, Wong is often negotiating complex IP transactions and drafting franchise agreements for the likes of the Manhattan Fish Market and Origin Herbal Hair Treatment. Despite being a newcomer to the firm, senior associate Loo Wai Hoong is already making a splash. The WTR 1000 debutante joins his peers in the enforcement table for his involvement in high-profile raids and anticounterfeiting matters – he recently assisted Shell and Castrol Limited with multiple raids against counterfeiters, with seized goods amounting to RM2 million.

ZICO Law

On the back of effusive peer feedback, ZICO Law rises to the silver tier for its extensive regional IP practice and local reputation. Since establishing its IP service in Malaysia, the full-service practice has extended its geographic footprint across Southeast Asia and grown into quite the behemoth – 18 offices cater to a largely foreign clientele, in addition to renowned domestic businesses. With 15 professionals dedicated to providing trademark services, the firm is an assured choice for clients looking for help with managing regional trademark portfolios. “Experienced and well-known IP practitioner” Linda Wang dispenses sage advice to a diverse set of IP portfolios by drawing upon nearly three decades of experience. She joins the enforcement table this year for her recent activity in contentious matters – she represented Starwood Hotels & Resorts in a trademark infringement case as well as Essity Hygiene and Health in a trademark non-use cancellation action. The vice president of the Malaysian IP Association, Boo Seng Ong advises on IP transactions, while dabbling in IP data protection on the side. For almost 20 years, Siew Ling Su has focused exclusively on intellectual property and gained an in-depth understanding of commercial IP issues.

Agencies

Agencies

Advanz Fidelis IP Sdn Bhd

A member of the Australian holding company QANTM Intellectual Property Group, Advanz Fidelis was founded by Jern Ern Chuah in 2000 and has since grown into a 30-strong team. From trademark prosecution to IP commercialisation, the firm has every IP angle covered. An IP adviser to the Malaysian state government of Sarawak and the only Malaysian representative on the UN Commission on International Trade Law Experts Group on Security Interests in Intellectual Property, Chuah is one of few local IP strategists with experience in IP valuation. Pui Keng Lim holds the reins of the trademark practice, while Siew Ling Lee tends to contentious matters and provides sterling service to Chinese-speaking clients.

Henry Goh & Co Sdn Bhd 

Henry Goh dominates the agencies table as the only gold-tier firm in Malaysia. The most prominent IP agency is also perceived to be the biggest trademark filer in the country, with headquarters in Kuala Lumpur and an office in Singapore enabling direct filing in both countries as well as Brunei. Sau Yin Tham is the firm’s most senior registered trademark attorney; he draws upon nearly three decades of experience to ensure that the trademark department runs smoothly. Senior legal counsel Azlina Aisyah Khalid takes charge of the prosecution practice, while simultaneously providing pre-litigation advice and handling opposition matters. Clients can look to Eng Leong Lim to resolve contentious issues. Well-versed in Singapore trademark practice and trained by the Japan Patent Office, Lim was involved in filing the first copyright notification and geographical indication registration in the country.

Ipman Global Intellect Sdn Bhd  

Buoyed by enthusiastic praise from clients and foreign associates alike, the “excellent” Ipman Global makes its debut in the WTR 1000 this year, with “reliable IP services, reasonable charges and good customer support” allowing it to offer one-stop trademark registration service. Domestic companies have found themselves relying on the IP boutique for global trademark portfolio management and SME business owners in particular find the firm a draw because of its “very convenient services”. Companies looking to expand through ASEAN will also enjoy its “convenient trademark platform” through which they can register intellectual property in neighbouring countries and gain access to “business networking platforms to collaborate on intellectual property, increase brand value and grow the business”. “The firm’s success rate is 100% and they can help to register trademarks that are impossible to be registered during the appeal stage.” The team of five IP professionals has filed trademark applications in more than 60 countries. At its core, Ipman Global aims to help businesses solve IP problems and educate the public about intellectual property – as one satisfied client proclaims: “I am most impressed by how they always arrange face-to-face appointments so that they can clearly explain to us the different types of trademarks. I have learnt a lot about intellectual property through them and I am very grateful.” Founder Patrick Chee Keong Low is a name for the address book. A registered trademark attorney in Malaysia and Singapore, he “excels in giving very proper instructions and providing prompt response and payments”. “I always believe in his advice when I have IP needs in Malaysia and Singapore.” “We are touched by his sincerity and effective communication.”

KASS International

With six offices across Southeast Asia, KASS International effortlessly handles trademark mandates for foreign and domestic entities. The one-stop shop excels in the prosecution space for regional IP matters. Aside from taking charge of local and global portfolios, director Geetha Kandiah often shares her IP expertise via the national media.

Marks & Clerk

“Marks & Clerk is very professional in executing trademark services and engaging with clients. They also provide excellent strategic advice and options from various perspectives, while being very transparent about the cost implications of each option.” Through its Kuala Lumpur outpost, the largest patent and trademark attorney firm in the United Kingdom has become a stalwart on the Malaysian IP scene, serving a predominantly foreign client base on IP matters in Southeast Asia. It recently negotiated an amicable settlement for Pear Technologies with Apple in two trademark opposition matters. Director Gerald Samuel offers more than just prosecution services through his law firm, Messrs Gerald Samuel, which works closely with the IP boutique. Admitted in Malaysia and Singapore, he ensures that his clients’ needs in the contentious and transactions space are met.

Mirandah Asia

Through a wide network of offices in 11 Asian countries, Mirandah Asia has been offering the full spectrum of IP services – especially region-wide trademark filing – for more than 30 years. Patrick Mirandah leads the firm from his headquarters in Malaysia.

TEE IP SDN BHD

Making its sophomore appearance in the WTR 1000, TEE IP is home to a 22-strong team of young professionals that has handled more than 10,000 cases in over 70 countries across the full spectrum of IP services. Although a large part of the practice centers on trademark prosecution for foreign and local companies, the side is equally able in managing other IP matters and in fact has just added a new department focusing on alternative sales channels. Besides its upfront pricing, the IP boutique stands out for its top-notch trademark monitoring system. Founder and CEO Lin Yik Tee has experience at the Malaysian IP Office as a policy and corporate planning executive, where he has been involved in multilateral trade and IP agreements.

Other recommended experts

At Gan Partnership, IP captain Foong Lam Tai plies his trade on behalf of many telecoms companies. The IP department was recently enhanced with the arrival of Lee Hishammuddin Allen & Gledhill alumni Bahari Yeow Tien Hong, Zhi Jian Lim, and their team of four IP lawyers. Not only do Yeow and Lim manage the local and international IP portfolios for the likes of ZTE Mobile, Genting Group and Sunway Group, they are busy representing famous companies in contentious trademark matters – acting for Apple in an opposition against Swatch, as well as Philip Morris in a multi-jurisdictional suit involving a sum of $2.5 million. They are also active in the transactions space, where they are drafting a software agreement for KPMG and advising Moët Hennessy Louis Vuitton on advertising and labelling requirements. The formidable duo is a fan favourite among foreign associates and corporate counsel. “Bahari is very attentive to his cases, and his creativity in finding a sound argument and supporting evidence led to our success.” “Exacting standards, prompt and accurate advice, as well as the ability to offer creative solutions – Bahari satisfies all of these criteria. His experience, level-headedness, expertise and diligence have further contributed to a productive working relationship, and we have already instructed him after he moved to Gan Partnership, which demonstrates the level of respect we have for him and his practice.” “Zhi Jian understands our business from a big-picture perspective, which is important because we are a global company. Not only does he provide strong and sound IP strategies to support our international IP portfolio, he offers out-of-the-box IP advice. He is always on the ball and quick to respond to our legal queries, so we never have issues with turnaround time.” Operating out of Sreenevasan Advocates & Solicitors, founding partner Ambiga Sreenevasan is not only well-known in the local IP community but also a human rights advocate, while her co-founder Janini Rajeswaran stands out for her expertise in domain name disputes, enforcement proceedings and implementing anti-counterfeiting programmes. Tze Lin Chong recently left Wong & Partners to set up ChongSoo Partnership, which focuses on intellectual property and commercial litigation.

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 - Gan Partnership
  • Cindy Goh Joo Seong - Chooi & Company + Cheang & Ariff
  • Pei Yee Kuek - SKRINE
  • Brian Law - LAW Partnership
  • Lee Lin Li - Tay & Partners
  • Zhi Jian Lim - Gan Partnership
  • Michelle C.Y. Loi - Shearn Delamore & Co
  • Kim Poh Ng - Christopher & Lee Ong
  • Sri Sarguna Raj - Christopher & Lee Ong
  • Timothy Siaw - Shearn Delamore & Co
  • Suaran Singh Sidhu - LAW Partnership
  • Ambiga Sreenevasan - Sreenevasan Advocates & Solicitors
  • Bong Kwang Teo - Wong Jin Nee & Teo
  • Linda CL Wang - ZICO Law
  • Tze Lin Chong - ChongSoo Partnership
  • Loo Wai Hoong - Wong Jin Nee & Teo
  • Melissa Long - SKRINE
  • Janini Rajeswaran - Sreenevasan Advocates & Solicitors
  • Gerald Samuel - Marks & Clerk
  • Foong Lam Tai - Gan Partnership

Individuals: prosecution and strategy

  • Keong Ming Wai - Chooi & Company + Cheang & Ariff
  • Celia Cheah Chiew Lan - LAW Partnership
  • Kherk Ying Chew - Wong & Partners (member firm of Baker McKenzie International)
  • Phye Keat Chew - Raja, Darryl & Loh
  • Jern Ern Chuah - Advanz Fidelis IP Sdn Bhd
  • Caroline Francis - Ram Caroline Sha & Syah
  • Teh Hong Koon - SKRINE
  • Geetha Kandiah - KASS International
  • Azlina Aisyah Khalid - Henry Goh & Co Sdn Bhd 
  • Pauline Khor - Rahmat Lim & Partners
  • Siew Ling Lee - Advanz Fidelis IP Sdn Bhd
  • Lee Lin Li - Tay & Partners
  • Bee Yi Lim - Tay & Partners
  • Eng Leong Lim - Henry Goh & Co Sdn Bhd 
  • Pui Keng Lim - Advanz Fidelis IP Sdn Bhd
  • Zhi Jian Lim - Gan Partnership
  • Jyeshta Mahendran - Shearn Delamore & Co
  • Patrick Mirandah - Mirandah Asia
  • Kim Poh Ng - Christopher & Lee Ong
  • Boo Seng Ong - ZICO Law
  • Charmayne Ong Poh Yin - SKRINE
  • Sri Sarguna Raj - Christopher & Lee Ong
  • Gerald Samuel - Marks & Clerk
  • Siew Ling Su - ZICO Law
  • Lin Yik Tee - TEE IP SDN BHD
  • Sau Yin Tham - Henry Goh & Co Sdn Bhd 
  • Janet Toh - Shearn Delamore & Co
  • Linda CL Wang - ZICO Law
  • Jin Nee Wong - Wong Jin Nee & Teo
  • Bahari Yeow Tien Hong - Gan Partnership

Individuals: transactions

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