Malaysia

A record number of 41,093 trademark applications were filed with the Malaysian IP Office in 2017, which was encouraging for the market’s many excellent trademark professionals. Malaysia and Myanmar remain the only Association of Southeast Asian Nations (ASEAN) countries to live outside of the Madrid system and since “intellectual property is not at the top of the government’s agenda”, no changes on this front are expected anytime soon. That the Trans-Pacific Partnership Trade Agreement was shelved in 2016 makes change even less likely. In other news, Advanz Fidelis has been acquired by Australian holding company QANTM; QANTM and IPH have both made waves in the Australian law firm market and are now evidently looking overseas.

Firms

  • 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
  • Raja, Darryl & Loh
  • RamRais & Partners
  • ZICO IP (Zaid Ibrahim & Co, a member of ZICO Law)

Rahmat Lim & Partners

Stellar full-service outfit Rahmat Lim & Partners is home to an outstanding IP team that consistently delivers commercially conscious results to patrons. The side’s leading light is Pauline Khor, a “deeply knowledgeable and intelligent practitioner” who is “an absolute pleasure to work with”. “She practices with the utmost integrity and is an indispensable ally in the fight against fakes.” Successfully orchestrating dawn raids is an everyday thing for Khor, who masterminds hard-hitting anti-counterfeiting campaigns for Chanel, Fred Perry, Harley-Davidson, MCM Holding and many more. A versatile operator, Khor is proficient in prosecution and delivers the goods when it comes to transactional work.

Raja, Darryl & Loh

Acting in concert with the firm’s commercial lawyers, Raja, Darryl & Loh’s highly specialised IP professionals do a great job of aligning their trademark and brands advice with the broader business needs of clients. They also bring excellent sector knowledge to the table and take a pragmatic approach to all IP tasks thrown at them. The team takes inspiration from Phye Keat Chew, an IP authority who has done much to advance IP best practices in Malaysia; he founded – and currently chairs – the Malaysia Intellectual Property Association and leads the EU-Malaysia Chamber of Commerce’s IP Committee, which means that he has a panoramic view on the most important issues of the day. Multi-talented, Chew is also lauded as a top corporate and unfair competition sage.

RamRais & Partners

When it comes to intellectual property and trademarks, esteemed full-service outfit RamRais & Partners provides an efficient and effective cradle-to-grave trademark service. Close integration with other parts of the firm enables the IP lawyers to take a broad strategic view on all manner of brand matters. As a trademark agent, solicitor, advocate and mediator, well-connected partner Caroline Francis acquits herself with distinction on a kaleidoscopic range of trademark briefs. Sources describe her as “highly experienced and knowledgeable in every facet of trademark practice”.

Shearn Delamore & Co

An IP trailblazer and the most prolific filer in Malaysia, Shearn Delamore is famed for its “resolute commitment to professionalism and superior service standards”. Its eight-partner IP team demonstrates a deft touch on all branding issues, earning commendations for its proficiency managing large portfolios and its resonant advocacy in adversarial scenarios. Advising primarily on search, prosecution and administrative proceedings, Jyeshta Mahendran is a key contact for rights holders; she leverages her enforcement experience to devise cast-iron protection schemes and adds value with her expertise on competition and data privacy law. The outfit’s litigation dream team is comprised of Karen Abraham, Indran Shanmuganathan and Timothy Siaw, who have been knocking it out of the park lately. Abraham is a great choice for anything complex, for example, she is currently handling a case for Sri Nona Food Industries, which turns on the construction of a contract Sri Nona entered into over 30 years ago. Shanmuganathan is appreciated for being “always available” and giving “direct, no-nonsense advice” to facilitate early wins. He recently secured injunctive relief and well-known trademark status for Verizon Communications in a trademark infringement and passing-off case. Making his WTR 1000 debut this year, Siaw focuses on patent litigation and life sciences but puts in assertive performances in trademark disputes and anti-counterfeiting matters. Janet Toh is the go-to for anything transactional; she is also renowned as a top expert in the areas of advertising, consumer protection and regulatory law.

Shook Lin & Bok LLP

A full-service law firm with a century of experience in Malaysia, Shook Lin & Bok is “extremely well-established”. The outfit is especially strong in intellectual property, licensing and franchising, but has a broad practice which encompasses registration and enforcement and everything in between. Michael Soo has been crucial in the development of the squad. He is an enforcement and litigation sharpshooter whose gleaming track record stretches back over three decades.

SKRINE 

Diligently attending to the needs of top Malaysian and foreign businesses, SKRINE is a “pre-eminent Southeast Asian firm that excels in numerous legal disciplines” – intellectual property being one of them. The firm provides patrons with an end-to-end trademark service internationally by drawing on its Lex Mundi and Pacific Rim Advisory Council networks. It has been on great form recently – partner and senior associate promotions and new clients coming on board demonstrate that the team is in fine fettle. Keeping this healthy groove going are Charmayne Ong Poh Yin and Guan Huat Khoo, who take the lead on prosecution and litigation respectively. For diverse clients, both are repositories of trust for convoluted matters where there is a lot at stake.

Tay & Partners 

An excellent one-stop shop for innovative brand owners, Tay & Partners provides “pragmatic and cost-efficient solutions”. The team always puts the client first and renders an attentive and flexible service. Lin Li Lee and the group have had an assortment of interesting mandates to get stuck into recently; representing Sky Capital in opposition proceedings and portfolio management; guiding trademark strategy for leading agri-business entity Olam International; and protecting and managing JD Sports’ growing trademark portfolio in Malaysia are just some examples of their recent highlights. Lee also had a notable win in the Kuala Lumpur High Court on behalf of Consejo Regulador del Tequila regarding the unauthorised use of a geographical indication by Pelican Winery. Alongside practice head Lee, partner Bee Yi Lim is another name to note. An astute portfolio manager, enforcer and transactional lawyer, she covers all the bases for her clients.

Wong & Partners (member firm of Baker McKenzie International)

Making the most of its Baker McKenzie International membership, gold-tier player Wong & Partners provides outstanding trademark protection, litigation and enforcement services, locally and on the international stage. The regularity with which the ensemble handles landscape altering litigations and anti-counterfeiting briefs has meant that its advocacy and enforcement skills have been sharpened to a fine point. This has been in evidence recently: the team executed Malaysia’s first-ever shipment-in-transit raid for a Fortune 500 consumer goods company; while also continuing with its work for Zhu Ge Kong Ming in a complex, long-running dispute concerning the recognition of trademarks for cultural products. On the prosecution side, the team has undertaken major trademark streamlining exercises, advised a leading fashion brand on product launches and put in place comprehensive brand protection strategies for existing clients, all while onboarding plenty of new ones. Overseeing the IP practice and dispute resolution groups is Kherk Ying Chew, a contentious maestro who artfully switches up her tactics to suit each case. Her partner Tze Lin Chong debuts in the WTR 1000 this year. Formerly an in-house counsel with a Malaysian satellite pay-tv company, he takes a broad and commercial perspective to trademark issues. One of the market’s rising stars, he performs with confidence and poise in High Court trials and brings the heat when pursuing counterfeiters.

Wong Jin Nee & Teo

Six-partner boutique Wong Jin Nee & Teo has a line-up of experienced practitioners who collectively possess infinite wisdom about all things brands. Committed to solving business problems and not merely advising on the law, Jin Nee Wang is a go-to for companies looking to monetise their IP rights. She previously served as president of the Licensing Executives Society Malaysia. Her fellow partner Bong Kwang Teo takes the lead on patent and litigation affairs; he is always abreast of the most important trademark trends and developments.

ZICO IP (Zaid Ibrahim & Co, a member of ZICO Law)

Present in all Association of Southeast Asian Nations member countries, ZICO IP is an assured assistant when it comes to regional IP protection. In Malaysia, the firm knows the lay of the land incredibly well – it has seven offices in the country putting it within easy reach of myriad domestic companies. Its local bench of trademark experts runs deep and includes Linda Wang, Siew Ling Su and Boo Seng Ong. Wang is a cogent choice for strategic prosecution, as well as litigation and mediation. Su and Ong are also respected litigators and enforcers and adept transactional IP lawyers to boot.

Agencies

Agencies

Advanz Fidelis IP Sdn Bhd 

Advanz Fidelis IP is an excellent all-rounder with robust patent and trademark teams and is therefore a great choice for companies with diverse portfolios. It protects clients to the max while putting them on a sure legal and regulatory footing, but also impresses in a business advisory role. Head of trademarks Pui Keng Lim is a trusted guardian for a prestigious set of clients, including LG Electronics, Hyundai Heavy Industries and the University of Cambridge. The hands-on practitioner has a knack for making complex IP concepts comprehendible; in line with this, she has been successful in building the organisation’s outstanding IP educational services. Advanz chief executive Jern Ern Chuah is a great contact to be able to call on. In July 2018, under his watch, the firm followed the path of Davies Collison Cave and FPA Patent Attorneys in becoming a constituent of Australian IP holding company QANTM Intellectual Property Limited.

Henry Goh & Co Sdn Bhd 

The most prominent IP agency in Malaysia, Henry Goh is a popular referral destination for Bruneian, Malaysian and Singaporean instructions. Recent business development trips to China, Japan and South Korea have proven immensely successful and have enhanced the firm’s already impressive ties with counterparts throughout Asia. Cognisant of the long-term goals of its patrons, the 42-year-old outfit does a wonderful job devising and executing brand protection strategies. At the helm of the prosecution practice is senior legal counsel Azlina Aisyah Khalid. As general manager, Sau Yin Tham ensures that the ensemble is operating efficiently; she is also the team’s most experienced trademark agent and knows the processes of the Malaysian registry like the back of her hand. Another name to note is trademark manager and business development strategist Eng Leong Lim. He manages filings and oppositions with poise and partners well with solicitor firms on enforcement matters.

KASS International

Distinguished outfit KASS International has recently hired two new trademark executives to cope with a burgeoning workload. The forward-looking agency has also opened an office in Yangon in anticipation of the implementation of IP laws in Myanmar. Director of trademarks and designs Geetha Kandiah is a versatile operator who manages filing and enforcement instructions with equal finesse. Founder P Kandiah now focuses chiefly on patents but still brings more than 30 years of trademark experience to the table.

Marks & Clerk (Malaysia) Sdn Bhd

The United Kingdom’s largest patent and trademark attorney outfit, Marks & Clerk is also an influential player in Asia. The side’s outpost in Kuala Lumpur does more than uphold the firm’s international reputation as an IP leader. Interested parties should call Gerald Samuel; he runs his own eponymously titled law firm, which is linked to Marks & Clerk and handles litigation and transactional work while ensuring non-contentious instructions go to the best-suited individuals.

Mirandah Asia

With a presence in 11 countries across Asia, cost-effective service provider Mirandah Asia is in pole position to tackle regional filing instructions. Patrick and Gladys Mirandah are the go-to individuals for patent, design, trademark and copyright services.

Other recommended experts

Shook Lin & Bok alumnus Kim Poh Ng runs a busy litigation practice at Christopher & Lee Ong. Ambiga Sreenevasan at Sreenevasan Advocates & Solicitors wears many hats; she is a barrister, solicitor and a patent and trademark attorney. A top human rights voice, she is also a leading light within the IP community.

Individuals: enforcement and litigation

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

Individuals: prosecution and strategy