Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

Shearn Delamore & Co’s intellectual property division has maintained its dominance in the market and belongs firmly in the top tier in Malaysia. The firm was winner of Asialaw’s Intellectual Property Awards for Malaysia in 2004, 2005, 2006 and 2007, and was named Malaysia IP Firm of the Year in 2006 and 2007 by Managing Intellectual Property. Co-headed by managing partner Wong Sai Fong, the department can look back on a successful year for an impressive list of clients.

The intellectual property practice at Shook Lin & Bok falls within its technology, media and telecommunications department. Known for its strength on IP disputes, the firm is also particularly capable on anti-counterfeiting and anti-piracy as well as licensing and franchising. Partner Connie Loo has advised multinationals and SMEs in the pharmaceutical, publishing, logistics and consumer goods industries on the protection of IP and trade secrets.

Skrine is one of the dominant players in the field of IP in Malaysia. The six partners manage to obtain a significant market share each year and the firm’s client list is notable. In August 2008, Smart Glove Holdings sought the firm’s advice on a complaint by Tillotson Corporation filed in the International Trade Commission regarding alleged patent infringement. Another high profile matter was partner Khoo Guan Huat’s work for Winthrop Pharmaceuticals when it successfully obtained judgment for a declaration that the Winthrop atorvastatin does not infringe Pfizer/Warner Lambert’s patent for astorvastatin, which is also called Lipitor.

Other work includes representing Telekom Malaysia and Telekom InfoMedia when both companies were plaintiffs against Buying Guide and Super Pages in relation to the infringement of telephone directories. German car manufacturer BMW turned to Skrine for advice when it was a plaintiff in an action against BMWork Hoechesteistung and BMWorks Specialist for trade mark infringement and passing off.

Meanwhile, partner Khoo Guan Huat and team represented pharmaceutical company Sanofi-Aventis as plaintiff against Dabur Pharma for patent infringement. The patent related to a pharmaceutical process to produce an oncological drug and Skrine obtained an interim injunction against Dabur restraining it from selling the product. The trial continues in October 2009.

The IP practice at Wong Jin Nee & Teo is one on the rise and being watched closely by peers and clients alike. Housing a strong technology bent to its practice, the five-partner team was joined in 2008 by Yean Yean Lim. Recent work includes acting for The Monarch beverage in a long-running dispute over licensing and distribution of its carbonated drink Kickapoo Joy Juice. Other key litigation clients include Abercrombie & Fitch, Intel, Leo Pharma and Timberland.

Tay & Partners managed to maintain its second tier position with ease. It is one of the few IP and technology practice groups in Malaysia headed by a woman, the respected partner Linda Wang. Partner Lim Pui Keng left the firm this year, but associate Oan Suet Yen joined.

Wang and team represented the Recording Industry Association of Malaysia (RIM) in filing claims against a large telecommunications company in Malaysia. The matter was in relation to license fee rates for the use of recordings and music, such as caller ringtones.

Another high profile mandate was advising the owner of Le Coq Sportif trade mark, while Wang was also involved in a dispute between Nestle and Nescafe. Tay & Partners also handle portfolio trade mark filing work for the Starwood group (Westin, Le Meridien, St. Regis and the Sheraton hotels), for KRISPY KREME, LG and the Sa Sa International Group. Patent work has been carried out for Kimberley-Clark, the US Gypsum Company and the Toyota group.

Pauline Khor was recruited in early 2008 from Shearn Delamore & Co, but now heads the IP department at Zaid Ibrahim & Co. The firm, which has a strong alliance with Singapore based Allen & Gledhill, did a lot of work in 2008 for Pfizer and its subsidiaries in relation to patents over the blockbuster drug Lipitor. Another high profile client is Sime Darby, with the firm managing its entire IP portfolio worldwide.

Zaid Ibrahim & Co does similar work for Dutch electronics manufacturer Philips, taking care of all of its Malaysian IP work. Walt Disney and Mars Inc have also decided to do all their IP work with the firm.

Other new recruits to the practice include Tracy Hah Yan Shan and Sukhjit Kaur Gill from Shearn Delamore & Co, while senior associate Vasanthi Rasathurai left in February 2009.

In September 2008, partner En Mohd Ariff Yusof left Cheang & Ariff to become a high court judge. Meanwhile, three new associates joined partner Cindy Goh Joo Seong. The resulting team represented two Australian companies on an application for rectification of a trade mark registered by local incorporated company Keylargo Industrial – with the High Court allowing the rectification procedure to go ahead.

Other work includes advising UBS in a court of appeal case where it tried to rectify a trade mark that was allowed by the courts, and representing Japanese company Kenwood Corporation in conducting two simultaneous raids on counterfeit walkie-talkies at seven Kuala Lumpur shops. The firm also acted for Nissin Food Products when it obtained successfully a statutory declaration from two local noodle manufacturers to cease Nissin’s mark.

J&J Denholm sought advice from Cindy Joo Seong in a passing off legal suit against a Malaysian company for using the trade name ‘Denholm’ as well as Denholm’s trade marks. The judge eventually ruled that the Malaysian company could no longer use the name and the trade marks.

Raja Darryl & Loh can look back on a satisfying year with IP department head Chew Phye Keat involved on a number of significant cases. For example, he initiated and operated a campaign for Business Software Alliance (BSA) to create awareness among Malaysian business entities for the need to legalise software used within their organisations.

Chew Phye Keat’s team also assisted a pharmaceutical multinational in a patent litigation matter. This involved initiating proceedings against a Malaysian distributor of generic pharmaceutical products to prevent the distribution of a drug that was protected by a Malaysian patent. Raja Darryl & Loh advised one of the country’s largest telecommunications companies on its recent regional re-branding exercise.

Sugha Chinasamy joined the firm as an associate in June 2008, after Lim Yoke Yuen had left in May of the same year.

Baker & McKenzie member firm Wong & Partners is one of the most internationally focused firms in Malaysia, and its IP team works for an impressive list of clients including Apple, Google, Sony, L’Oreal, Malaysian Airlines and Chevron. The Danone Group was added to that list in January 2009 when it instructed the firm to manage its entire trade mark and design portfolio.

Key mandates over the last 12 months include advising The Clorox Company in relation to two television broadcasters’ complaints against Reckitt Benckiser. Meanwhile Chevron turned to the firm when defending a broadcasting advertisement concerning the ‘unbeatable cleaning power’ of Techron in a complaint by Shell.

Elaine Yap was made partner this year, while experienced partner Chew Kherk Ying advised DHL in successfully obtaining a permanent injunction against an infringer using the name ‘DHL’ as part of its corporate brand. He also represented Apple in a domain name dispute for the domain name www.apple.com.my. The Kuala Lumpur Regional Center for Arbitration ruled in favour of Apple.

Abdullah Chan

Abdullah Chan’s modestly sized IP division is headed by Tai Foong Lam. It advised Malaysian Biotechnology Corporation (MBC) in an acquisition of an exclusive world-side license outside the field of oncology for nanotechnology that had been researched in Paris to fight cancer. Other clients include DiGi Telecommunications, Genting Berhad, Jardine Matheson, UMW and NZ New Image.

Naqiz & Partners

Managing partner Syed Naqiz Shahabuddin heads the IP practice at Naqiz & Partners, which includes fellow partner Eric Chin and two associates. Naqiz is a domain name panel member of WIPO, and was one of the very first individuals in Malaysia to practice domain name cases. Recent work includes advising Genting Berhad on UDRP proceedings in relation to the client’s claim over domain names gentingcasino.com and gentingpoker.com. WIPO ruled in favour of the first in March 2009, but the latter case is still pending a decision.

Raslan Loong

The small IP department of Raslan Loong, led by Loong Caesar, managed to pick up a few good cases this year. It advised a Malaysian franchisee on the acquisition of the franchise rights for a very large Asia pacific franchise operation. Jeffrey Tan advised a Malaysian consultancy firm on the protection of the contents of a very public and high profile website. Other clients include Twinkle Toes, Ansa House, Sebong Rubber, Mcren Oceanus Holding and Edaran Otomobil Nasional.