Q: Can you tell us about your firm? (size, IP practice focuses, key individuals, etc)?
A: Henry Goh is a leading Malaysian IP consultancy firm that offers a complete range of IP services encompassing patent, trademark, industrial design, copyright and licensing matters.
Dave A Wyatt leads our team of patent professionals, who hail from diverse backgrounds in law, engineering and life sciences. Our patent team has been recognised for its astute and effective handling of substantive patent matters such as drafting specifications and patent-related legal opinions, as well as patent prosecution not only before the Malaysian IP Office, but also before major foreign patent offices.
Our trademark team, led by Sau Yin Tham and Azlina Aisyah Khalid, has been at the forefront of trademark practice since the Malaysia Trademarks Act 1976 came into force. In addition to the skilful management of day-to-day trademark issues, including pre-filing search and advice, filing, prosecution, opposition, renewal and maintenance, the advice of our in-house legal counsel on exploitation and enforcement is much sought after by local and foreign clients alike.
Henry Goh’s patent and trademark teams have been consistently recognised by fellow IP practitioners and numerous IP publications as one of the top-ranking IP practices in Malaysia.
Q: The trademark practice has naturally expanded into geographical indication protection. Can you tell us a little about what the importance of GI rights in the region?
A: As Malaysia is a country rich in natural resources, agricultural produce and cottage industries, the introduction of the Geographical Indications Act 2000 has been a boon to local producers. To date, more than 80 Malaysian geographical indications (GIs) have been granted registration, signalling a healthy awareness of the importance of GIs in the development of Malaysia’s socio-economy. Intellectual Property Corporation of Malaysia (MyIPO) has been actively raising awareness among local producers to protect their GIs because, when done right, it can raise the country’s profile, enhance producers’ livelihoods, provide market recognition and quality assurance, and command a premium price for GI products.
Q: As part of its mission, the firm promotes IP education and awareness in the business and academic communities. What does this involve and how do you measure success?
A: Henry Goh regularly conducts introductory and advance-level seminars and workshops on Malaysian IP topics for local IP owners in the business and academic communities. Our patent and trademark professionals have also been invited to lecture on Malaysian IP law by local and foreign IP associations such as:
- the Malaysian Intellectual Property Association;
- the Japan Patent Attorneys Association; and
- the Japan Intellectual Property Association.
Over the years, we have noticed a gradual increase in IP awareness among the Malaysian public, as well as elevated awareness of Malaysia as an attractive IP marketplace. This increase can be measured not only by the steady rise in the number of Malaysian patent, trademark and industrial design applications (filed by both Malaysian and foreign parties), but also in the more insightful queries posed by local IP owners. We have also observed a subtle broadening of the breadth of IP issues of concern to Malaysians, which are no longer limited to basic registration issues and include issues relating to the quality of IP registration obtained.
Our local IP laws should be amended to provide specific legal measures to deal with the increasing prevalence of online piracy and the sale of counterfeit goods through online marketplaces, including regulating the duty of online retailers, false advertising and the enforcement of IP rights online. Malaysia also needs to adapt by recognising non-traditional trademarks and the valuation and monetisation of intellectual property – all of which are a staple in many mature IP jurisdictions.
Q: How does your team keep abreast of the latest legal developments in the IP world?
A: Each professional has their own sources of information, including direct communication with foreign associates and professional associations, newsletters, publications and digital law libraries, as well as experience of handling cases in both local and foreign IP offices. Our patent and trademark teams meet regularly at in-house townhalls and technical discussion sessions to exchange relevant information on new developments in IP law and practice worldwide.
When warranted, our professionals also participate in training conducted locally and overseas.
Further, we have noticed that face-to-face meetings with associates at international conferences or during courtesy visits are one of the best sources of information.
Q: What do you think are the big trends that will affect IP professionals over the next few years?
A: With particular reference to IP professionals in Malaysia, awareness and knowledge of intellectual property has grown significantly over the past decade. As a result, clients have higher expectations of their IP advisers than they had in the past. Further, as the Malaysian economy is predominantly export-oriented, IP advisers must have good knowledge of foreign IP laws and developments, as well as a strong network of dependable and experienced foreign associates. Technological changes are also affecting IP practitioners, who need to be open minded about new ways of working and interacting with clients.
Q: What are the biggest challenges facing rights holders in Malaysia specifically?
A: The level of knowledge and quality of service by Malaysian IP firms on substantive matters vary enormously across the industry, which disadvantages first-time clients. Inconsistent practices by different official examiners at MyIPO is a challenge, as are unannounced and seemingly arbitrary changes in official practice from time to time. Outside Kuala Lumpur, there are still no specialised IP courts, so the lack of IP experience among judges calls for additional effort and strategy by practitioners in IP litigation.
Malaysia is not short of good inventors, authors or traders who are constantly creating new intellectual property, but their potential may not be being fully explored due to a lack of confidence in the marketplace, relatively low IP awareness and cost prohibitions.
Local rights holders continue to face some administrative challenges when seeking registration, especially when MyIPO’s e-filing system is often disrupted and riddled with technical difficulties. Although examination timelines have improved significantly over the years, MyIPO can continue to do its part by releasing official decisions expeditiously without any sacrifice in quality. We should emulate IP offices that constantly seek to bring the cost of IP protection down, where official fees decrease when the office runs more efficiently.
Q: Malaysia is tipped to join the Madrid Protocol in the near future. What impact will that have for both the market and IP firms and agencies?
A: Malaysia’s accession to the Madrid Protocol is long overdue and we are still waiting for the relevant trademark legislation to be amended and enforced. The delay means that local brand owners are unable to easily file overseas using the Madrid route as they have to incur additional costs for filing in each country nationally.
In order to take full advantage of the international registration system, Malaysian trademark owners must be able to have a business expansion vision that extends beyond their current domestic market and considers new markets that will best fit their business platform. It is hoped that MyIPO can seek to expand its role beyond a trademark originating office and bridge the gap between the IP community and local and international trade, promoting other areas of protection beyond the main branches of intellectual property.
On the IP practitioner front, in view of the imminent accession to the Madrid Treaty, most if not all local agencies and IP law firms have made preparations such that, when the new system is finally in place, we will be ready to diversify our core businesses by shifting our focus on higher-end trademark prosecution and enforcement.
Q: How are client demands changing, and what impact has that had on your practice?
A: As in many other industries, clients are increasingly time and cost conscious. While these are reasonable concerns, we are also helping clients to appreciate the value of a thorough examination of their intellectual property so that granted rights can be properly enforced or can withstand attack.
Similarly, many clients demand instantaneous answers and more than one solution to an issue that they may be facing. Responsiveness is a given, but we must remain one step ahead in anticipating clients’ needs. This involves keeping pace not just with local IP knowledge, but also with foreign law and practice, as well as being well connected internationally, as there is considerable interest in overseas IP protection.
Q: What qualities make for a successful IP attorney/lawyer?
A: Patience, humility, resilience and creativity. A successful IP attorney must keep pace with the ever-changing landscape in this robust field; not only in terms of legal developments, but also to meet the changes in clients’ needs and demands. This requires an attorney to interact open-mindedly with clients. They must be creative and must recognise that there can be more than one solution to any IP problem.
Q: Finally, if you were to give one piece of advice to practitioners starting their career in IP, what would it be?
A: This is not a job, it is a career. Although it is desk based, the desk looks different every day. Be flexible and evolve as practice and client demands change over time. Always be willing to learn, especially from clients.
For new practitioners starting out in the IP world, a key understanding of basics is of paramount importance as the foundation must be strong in order for individuals to thrive. As intellectual property is also a creative endeavour, practitioners must be innovative enough to provide real business solutions for their clients.