Malaysia

Malaysia is expected to become party to the Madrid System imminently, having deposited the accession instrument in Washington DC in August 2016. Madrid concerns aside, the market appears stable; commentators report that there is a lot of trademark activity in the courts – including at the appellate level – with foreign companies battling against one another and locals increasingly looking to enforce against both international and domestic competitors. The trademark service provider market has seen little change over the last year – the WTR 1000 rankings for 2018 follow those of 2017 closely – although there is a notable trend for the establishment of micro-firms consisting of two or three professionals.

Firms

  • Shearn Delamore & Co
  • SKRINE 
  • Wong & Partners (member firm of Baker McKenzie International)
  • Shook Lin & Bok LLP
  • Tay & Partners 
  • Wong Jin Nee & Teo
  • ZICO IP
  • Rahmat Lim & Partners
  • Raja, Darryl & Loh
  • RamRais & Partners

Rahmat Lim & Partners

Rahmat Lim is a dynamic corporate firm with first-rate IP credentials and a commercial eye for brand-related matters. The dedicated IP and technology team manages portfolios deftly and excels in time-critical enforcement scenarios. An association with gold-tiered Singaporean firm Allen & Gledhill puts it in a prime position to handle regional IP matters. Pauline Khor provides assured leadership to the IP team. Known for the strategic acuity of her advice and for her criminal IP enforcement expertise, she is a versatile operator who artfully straddles the contentious/non-contentious divide.

Raja, Darryl & Loh

Large full-service outfit Raja, Darryl & Loh keeps its ear to the ground when it comes to IP developments, the latest local and international trademark law, policy and practice news so that it can provide assured protection and enforcement guidance to brand owners. The monetisation of intellectual property is a particular strong suit for the squad, which maintains a “robust franchising practice”. Phye Keat Chew is the helmsman of the firm’s IP practice. An experienced corporate lawyer, he ensures that the group’s efforts are directed to supporting their clients’ business development. He is, nonetheless, steeped in IP wisdom and is a past president of the Association of Southeast Asian Nations (ASEAN) IP Association. The dexterous lawyer is also hailed for his competition law know-how.

RamRais & Partners

Intellectual property is a central pillar of RamRais’s broad commercial law and litigation practice. Offering virtually every trademark service under the sun, its dedicated team registers rights efficiently and economically, monetises them assiduously and enforces them vigorously. Managing partner Caroline Francis has been in the IP game for nearly two decades. An advocate and solicitor, trademark agent and mediator, she is well prepared for absolutely any eventuality.

Shearn Delamore & Co

“Shearn Delamore has been a leader in the IP market in Malaysia for many years and is still the biggest player on the scene.” The group is renowned for its hard-hitting enforcement and litigation work; close cooperation with the government authorities nets it anti-counterfeiting success time after time, while in civil infringement litigation, clever arguments and nimble footwork have enabled it to set many precedents. Practice leader Karen Abraham is a firm fixture in the courts and a top litigator across the country. “She can move you forward when you’re faced with the most challenging obstacles and supplements her instructive and insightful advice with a deep knowledge of regulatory frameworks.” She has an ardent following among luxury goods brands and has recently represented Hermès International, obtaining a summary judgment against a defendant unlawfully using its trademarks. Blending IP and unfair competition expertise, Indran Shanmuganathan also shines brightly in complex court litigation and sets the right tone in alternative dispute resolution forums. The non-contentious team files directly in Malaysia, Singapore and Brunei and is a great option for brand owners looking to consolidate their international portfolios in the region. Unstintingly dedicated to quality Jyeshta Mahendran is a key contact in this regard. Anchoring a dynamic transactional practice is Janet Toh, who makes her debut in the WTR 1000 this year.

Shook Lin & Bok LLP

Quality is the central focus at the venerable Shook Lin & Bok, a well-resourced, technologically sophisticated firm with cutting-edge expertise across 17 departments. Its IP team handles all aspects of prosecution with finesse and does not shy away from the most challenging transactional instructions. However, it is famed for its proficiency in high-stakes litigation thanks to the leadership of seasoned advocate and deputy managing partner Michael Soo, “a household name in Malaysian intellectual property”. As testament to the high regard in which he is held, Soo is often called on for an opinion on infringement and passing-off cases in which he is not directly representing a litigation party.

SKRINE 

“Excellent across the board in intellectual property”, SKRINE is a “top-notch Malaysian firm” which “more than deserves its gold-tier placement”. “The sizable team is continuously growing and its stellar reputation is so firmly established that it can afford to be very light on marketing.” The group has proven its mettle in trademark and IP litigations in which there is a huge amount at stake; Guan Huat Khoo is a hotshot litigator who never loses his cool. He chairs the IP disputes practice, while Charmayne Ong Poh Yin takes the lead on the registration side of the practice. Her granular knowledge of IT and e-commerce matters makes her a natural port of call for technology companies seeking to protect their brand rights.

Tay & Partners 

The young, vigorous, “well-organised” and deeply committed team at Tay & Partners focuses all its energies on satisfying the unique needs of all of its clients and offers one of the most personalised services available on the market. Head of intellectual property Lin Li Lee has performed flawlessly on a variety of oppositions lately and has been busy advising patrons on infringement and passing-off claims. “Responsive and commercially minded, she provides high-quality strategic guidance in a timely and cost-effective manner.” Bee Yi Lim is another key contact for the address book; she never fails to add value in her local and international portfolio management practice by dispensing trenchant regulatory and transactional advice along the way.

Wong & Partners (member firm of Baker McKenzie International)

Baker McKenzie member Wong & Partners hits home runs in trailblazing trademark litigations and delivers in anti-counterfeiting enforcement raids time and time again. The confidante of a slew of famous international brand names, IP manager Kherk Ying Chew draws on an encyclopaedia of plans for fighting and resolving trademark conflicts. She continues to enhance her résumé with pioneering cases. For example, while acting for Louis Vuitton Malletier, she recently handled the first case in Malaysia in which the courts had to consider whether service of cause papers to a local trademark agent constitutes valid service on the foreign registered proprietor; she is also acting for Zhu Ge Kong Ming in a long-running dispute – the first in Malaysia to deal with the recognition of trademarks created for cultural products. Respondents refer to her as “a seasoned lawyer who gives practical advice and a business perspective”. A one-stop shop for brand owners, Wong & Partners also provides rich strategic advice to clients, whether they are streamlining their portfolios, launching new products or seeking to mitigate legal risks.

Wong Jin Nee & Teo

Compact boutique Wong Jin Nee & Teo is a formidable force in the Malaysian IP space and maintains a “well-rounded trademark practice” that runs the gamut from brand protection to enforcement and commercialisation. On top of that, the erudite team can expertly advise on consumer protection, regulatory, public policy and competition matters with confidence and poise. Key contacts include Jin Nee Wong and Bong Kwang Teo; both call on extremely broad expertise in order to offer clients holistic advice.

ZICO IP

ZICO’s strong ASEAN presence makes it a compelling choice for brand owners in need of regional protection and for those that want to take advantage of the cost-efficiency that comes from having a single point of contact. Among the firm’s top IP specialists – across all its offices – is Linda Wang, a proficient litigator and mediator who has a magic touch when it comes to complex infringement and counterfeiting cases. Another Kuala Lumpur contact for the address book is Siew Ling Su, a mercurial all-rounder who has set several precedents in court and negotiated multiple high-value transactions. Commercial intellectual property is the forte of Boo Seng Ong; like his colleagues, he is a versatile operator with a deft enforcement touch.

Agencies

Agencies

Advanz Fidelis Sdn Bhd 

In the trademark business for nearly two decades now, Advanz Fidelis has an excellent track record in obtaining valuable brand rights and keeping them in tip-top condition for clients. Always going the extra mile, the side organises various education programmes for patrons and other market stakeholders and is generous in sharing its knowledge with the wider IP community. Chief executive Jern Ern Chuah has blue-blooded IP value creation instincts and is a savvy strategist. Head of trademarks Pui Keng Lim is a former lawyer who exercises meticulous attention to detail at every stage of the prosecution process.

Henry Goh & Co Sdn Bhd 

Regarded by many as the preeminent IP agency in Malaysia, Henry Goh cultivates deep and longstanding relationships with brand owners and, as a result, provides insight and solutions that go right to the heart of their business. The organisation recently marked its 40th anniversary; having focused on quality since its establishment, it certainly deserved to celebrate this milestone. Key contacts in the large, yet highly specialised team include senior legal counsel and prosecution leader Azlina Khalid and head of the trademark department Sau Yin Tham. Another experienced brand strategist is Eng Leong Lim; he has business development responsibilities, but never takes his eye off the ball for his clients.

KASS International

A loyal ally for brand owners at every stage of product ideation and protection, KASS International helps underpin clients’ business developments in a number of meaningful ways. With experts stationed at its offices in Malaysia, Singapore and Indonesia, it takes a joined-up approach to cross-border mandates. Founder P Kandiah and director of trademarks and designs Geetha Kandiah are reliable and responsive contacts.

Marks & Clerk (Malaysia) Sdn Bhd

Having recently taken on new trademark staff and increased its office space, Marks & Clerk has expanded its Malaysian operations in response to its popularity among US, European, Japanese and Korean clients. The team overlays its rich knowledge of trademark law and procedure with an internationally minded and strategic approach to dispensing a full suite of trademark protection services. Thorny oppositions are a particular forte for Gerald Samuel, who runs a law firm that works in concert with Marks & Clerk – a structure which gives clients access to an all-encompassing service.

Mirandah Asia

In pole position for regional trademark instructions, Mirandah has bureaux in six ASEAN countries, but a reach that extends across the continent; it also has an affiliated office in India. A “prosecution powerhouse”, it is “highly skilled and expedient in all filing activities”. The family-run boutique was founded by Patrick and Gladys Mirandah.

Other recommended experts

Kim Poh Ng produces excellent work for a reasonable price. He communicates timely and comprehensive advice in a way that is easy to understand.” The experienced High Court litigator practices at Christopher & Lee Ong. Founder of Sreenevasan Advocates & Solicitors Ambiga Sreenevasan is a prominent human rights advocate and former president of the Malaysian Bar; the highly respected lawyer is a shrewd advocate and draws on a deep well of trademark and IP expertise.

Individuals: enforcement and litigation

  • Karen Abraham - Shearn Delamore & Co
  • Kherk Ying Chew - Wong & Partners (member firm of Baker McKenzie International)
  • Guan Huat Khoo - SKRINE 
  • Michael Soo - Shook Lin & Bok LLP
  • Linda CL Wang - ZICO IP
  • Pauline Khor - Rahmat Lim & Partners
  • Indran Shanmuganathan - Shearn Delamore & Co
  • Ambiga Sreenevasan - Sreenevasan Advocates & Solicitors
  • Bong Kwang Teo - Wong Jin Nee & Teo

Individuals: prosecution and strategy