2 Sep
2019

"In a service industry like ours, human capital is the biggest asset"

Skrine

At Skrine you head both the IP practice and the TMT practice. Do you see increased divergence between the two areas and how do you keep up to date on the latest developments in both fields?

Historically, at Skrine, the TMT practice evolved out of the IP practice group. However, in my mind, they have always been two distinct areas.

The firm dedicates substantial resources to the acquisition and maintenance of our knowledge base, by having dedicated personnel who regularly update our lawyers on developments in all areas of practice. Personally, I keep ahead of changes in the IP and TMT landscape by participating in government and industry initiatives, including legislative reform working groups and industry engagements that contribute to the shaping of laws in Malaysia.

How are client demands changing and what effect has this had on the management of your practice?

Nowadays, many clients are well versed in the law. They are looking for fast, accurate strategic solutions that will propel them towards their goal, while managing their exposure to risks, at a reasonable cost.

To improve efficiency, we have invested in database management systems and trained our lawyers and employees to carry out client instructions effectively and accurately. Our lawyers are also trained to consider client instructions, pose relevant questions and propose strategies that may extend beyond trademark protection and enforcement.

Further, with an increasing number of Chinese companies expanding their operations into Malaysia, there has been a higher demand for Chinese language skills among the lawyers who handle our IP prosecution portfolio. The firm has strong Chinese-speaking lawyers, who are part of our China desk and can advise Chinese clients efficiently.

Related to that, what are the top qualities that clients should look for when seeking world-class trademark advisers?

Clients should engage trademark advisers who will take the time and trouble to learn about their business, educate themselves about market conditions, business climates and government policies, and anticipate challenges in order to prepare their clients in handling them.

Clients should also seek out trademark advisers who are equipped with the legal knowledge and skills to create tailor-made solutions, while adopting a holistic approach that takes into account the multitude of factors that sometimes extend beyond the law.

What is the biggest career challenge that you have faced, and what can others learn from how you overcame it?

The biggest challenge for me is ongoing. It is something that I am still working on and will continue to work on: building, growing and ensuring continuity in the leadership of our firm’s IP and TMT practice. In a service industry like ours, human capital is the biggest asset. Discovering talent, providing them with a conducive environment to learn and grow professionally, and giving them an opportunity drive the practice is something that I give a lot of thought to and always hope to do better.

I have been fortunate to encounter young lawyers with a keen interest in intellectual property and TMT, whom I hope will take the firm to greater heights in the future.

Finally, what is the one thing that brands looking to expand operations into Malaysia need to know with respect to trademarks?

IP protection is often relegated to the low-priority list in business expansion plans. The suggestion here is nothing new; I would strongly urge brand owners to consider putting IP strategies in place early when it comes to their implementation plan. Brand owners should think about protection through registration, as well as conducting market research, to ensure that they will not attract litigation from a competing rights holder before business activities take place. This is because some steps may need to be taken to clear the path for business activities (eg, applying to the court to expunge a competing mark or obtaining a declaration of non-infringement in the case of patents) and these may require some time to resolve.

Skrine

Level 8, Wisma UOA Damansara

50 Jalan Dungun, Damansara Heights

Kuala Lumpur 50490

Malaysia

Tel +60 3 20981 3999

Fax +60 3 2094 3211

Web https://www.skrine.com/

Charmayne Ong Poh Yin

Partner

[email protected]

Charmayne Ong Poh Yin heads both the IP practice and the technology, media and telecoms (TMT) practice in Skrine. As a leading figure in IP and TMT legal advisory and compliance, she has extensive experience in both spaces and has worked with regulators, public institutions and companies of all sizes in shaping the future of both fields. Ms Ong Poh Yin is a registered patent, design and trademark agent in Malaysia.