Malaysia SKRINE

SKRINE, one of the largest full-service law firms in Malaysia, has a depth of experience in a range of legal matters that it has acquired over its 53 years of practice. The firm is led by 43 partners and has more than 100 lawyers across the corporate, dispute resolution and IP divisions.

The IP division is led by seven partners and advises on all aspects of intellectual property, which includes the following.

Trademarks

  • Preparation and prosecution of applications in Malaysia and internationally
  • Availability searches
  • Advice on registerability and selection
  • Watch services
  • Renewals
  • Cancellation and opposition of grants of registration
  • Licensing
  • Acquisitions and assignments
  • Due diligence and audits
  • Market investigations to detect counterfeits and piracy
  • Recordals, including changes of name and address

Patents, utility innovations and designs

  • Preparation and prosecution of patent, utility innovation and design applications in Malaysia and through associates in other countries
  • Patentability and availability searches
  • Advice on patentability of inventions
  • Patent, utility innovation and design renewals
  • Patent invalidations
  • Licensing
  • Patent acquisition and assignments
  • Due diligence

Copyright

  • Advice on protection and enforcement
  • Transfers
  • Licensing
  • Preparation of statutory declarations for copyright ownership
  • Preparation of voluntary notification applications
  • Liaising with the Ministry of Domestic Trade and Consumer Affairs on criminal enforcement of copyright

Trade secrets/confidential information

  • Advice on and drafting of confidential agreements

Licensing/technology transfers

  • Trademark, patent, copyright and trade secret licensing
  • Drafting and advising on licence, franchise, distributorship, agency and contract manufacturing agreements
  • Drafting and advising on technology transfer agreements
  • Liaising with relevant government and regulatory bodies for registration of franchises and other related matters

IP litigation

  • General advice on all aspects of IP litigation
  • Applications for trade description orders
  • Litigation involving infringement of trademarks, copyright, patents and designs including injunctions, Anton Piller orders, Mareva injunctions and other interim relief
  • Criminal enforcement of trademarks and copyright
  • Passing-off actions
  • Licensing and franchising disputes
  • Domain name disputes

SKRINE’s lawyers are all qualified advocates and solicitors, as well as registered trademark agents who have rights of audience before various IP registries, the Registry of Courts and courts in West Malaysia.

The IP division has a wide range of clients in all areas of commercial and industrial activity, including major oil and gas companies, pharmaceutical companies, international steel companies, computer software companies, multimedia and telecommunications companies, e-commerce companies (‘dot-coms’), major luxury goods companies, major international and domestic banks, multinational electric and electronic companies, major tobacco companies, international airlines, manufacturers of industrial and consumer products, insurance companies and major chemical companies.

Awards and accolades

  • Malaysia Law Firm of the Year – Chambers Asia Pacific (2015)
  • Malaysian Intellectual Property Firm of the Year –Managing Intellectual Property Global Awards (2014-2016)
  • Tier 1 for intellectual property – Chambers Asia Pacific and Chambers Asia Global (2011–2015);
  • Tier 1 for intellectual property, information technology and telecommunications – Legal 500 Asia Pacific (2014-2016)

SKRINE is the exclusive Malaysian member of Lex Mundi, a network of leading independent law firms in over 160 jurisdictions around the world and the Pacific Rim Advisory Council, a network of 30 top-tier independent member law firms.

Main address

Unit 50-8-1
8th Floor
Wisma UOA Damansara
50 Jalan Dungun Damansara Heights
50490 Kuala Lumpur
Malaysia

Contact details

E: skrine@skrine.com
T: +60 3 2081 3999
F: +60 3 2094 3211
W: www.skrine.com

Professional contacts

Charmayne Ong Poh Yin, Partner
E: co@skrine.com

Khoo Guan Huat, Partner
E: kgh@skrine.com

Theresa Chong, Senior partner
E: tc@skrine.com

Recommended individuals at this firm

Tatt Boon Lee
Malaysia

Charmayne Ong Poh Yin
Malaysia

Pei Yee Kuek
Malaysia

Guan Huat Khoo
Malaysia

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Issue 83