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

“Shearn Delamore & Co is a premier, first class IP practice in the country,” declares one market observer. The firm leads the pack for yet another year, with its domination of the IP market apparent to many clients. One says: “The firm goes that extra mile for its clients. It anticipates future problems or concerns and deals with these question marks without limiting its services or advice. It goes from being a law firm to a preferred strategic adviser.” The firm’s IP team is led by Wong Sai Fong and Karen Abraham, who are both regarded as “top class IP practitioners”. A highlight for the firm last year was its advice to the Agricultural & Processed Food Products Export Development Authority of India on the cancellation of Ponni as a trade mark for rice.

The IP practice at Skrine is “basically a national institution”, says a peer. Clients are equally impressed , with one noting: “It’s a top tier outfit in the country, especially in its IP litigation work.” Partner Khoo Guan Huat is the key driver behind the success of this department. “The team has great knowledge in IP law, but one must single out Khoo for especial praise,” says a client. “He’s a very well respected lawyer.” The firm represented Fifa in the issuing of cease and desist letters to infringers involved in ambush marketing at the last Fifa World Cup.

“Tay & Partners has a dedicated IP practice that stands above the others,” says a peer. The firm once again sits in the top tier, with partners Linda Wang and Su Siew Ling acclaimed by clients for their “excellent advice and practical solutions”. A particular area of expertise is the team’s litigation ability, with one client saying: “The lawyers there are very efficient in litigation in the courts in the country.” The firm advised Terumo Corporation in a patent litigation relating to a medical device. The trial has commenced but is yet to be completed. Wang headed up this case, with the pending decision expected to yield useful guidance and precedents on future patent litigation cases.

Created as a breakaway firm from Raja Darryl & Loh in 2005, Wong Jin Nee & Teo has enjoyed a swift rise to the top of the IP market in Malaysia. It is known for its work in both patents and trade marks. A competitor praises the firm, saying: “The lawyers at the firm are veritable patent experts.” Partner Wong Jin Nee is acknowledged by the market as a top IP professional, with one peer adding: “I think highly of her work. She is a much respected lawyer.” The litigation expertise of partner Teo Bong Kwang is often mentioned by market observers. He is regarded as a “leading litigator in the country”. The firm counts many top global brands and corporates among its esteemed clients, including Abercrombie & Fitch, eBay and Microsoft.

Led by the versatile Chew Phye Keat, the IP practice at Raja Darryl & Loh retains its ranking this year. Keat is highly regarded by peers and clients alike, with one competitor saying: “I have lots of respect for him. He has been a champion of the industry for many years.” The firm maintains a strategic alliance with Australian law firm Allens Arthur Robinson, which helps it to maintain a cross border delivery of service for its global clients. The IP team represented a Malaysian food and beverage company in its product distribution in Indonesia. This matter is yet to complete, with a number of court actions having been filed and disputes continuing in Indonesian courts.

“Shook Lin & Bok is a preeminent name in the IP industry in Malaysia,” says one competitor. Head of practice Michael Soo is highly respected in the market, with a client noting: “He is one of the top litigators, and its sets our mind at ease once he’s on the job.” The strength of the firm’s overall dispute resolution practice augments its proficient IP team. The firm provides advice to multinational clients such as Chivas Regal, which is owned by Pernod Ricard Europe, BMW, and Colgate-Palmolive. “The lawyers provide a well versed practice and always ensure a reliable service,” says one satisfied client.

Armed with the global reach of the Baker & McKenzie network, Wong & Partners is a rampant force in IP in Malaysia. Partner Chew Kherk Ying is recommended and receives glowing praise from clients, with one saying: “She is an integral part of the IP industry in this country, and is simply excellent.” The firm acts for multinational clients such as Nokia, Hewlett Packard and Procter & Gamble. A notable matter was the firm’s representation of Dunhill Tobacco, British American Tobacco (Investments) and Commercial Marketers & Distributors in the initiation of legal proceedings against a local cigarette manufacturer for multiple IPR infringements.

Cheang & Ariff’s IP practice has deep experience with trade marks in Malaysia. The team, led by partner Cindy Goh, is praised by clients for its “quality and professional staff and people”. A continuing matter is the firm’s representation of Kawasaki Heavy Industries in opposition work against a trade mark registration by a Taiwanese company.

Michael Chai & Co

Michael Chai & Co is a modestly sized multidisciplinary legal outfit with a focus on providing attentive and quality services to clients. The firm frequently advises international corporate entities, and has expertise across all areas of intellectual property. It regularly works with international associations such as INTA, APAA, AIPPI and the Asean Intellectual Property Association.