Sri Sarguna Raj

Sri Sarguna Raj

Key Practice Areas:

Sri heads the practice group, and focuses on intellectual property law in relation to both contentious and non-contentious work.

He represents and assists clients in relation to disputes relating to patents, copyright, privacy and trade secrets, trademarks, passing off, industrial designs, advertising and domain names and also in relation to various aspects of enforcement of intellectual property rights. Over the years, he has represented many multinational companies from a diverse range of sectors in litigation and in managing and implementing anti-piracy and anti-counterfeiting programmes for them.

His non-litigation work includes registration of IP rights and in relation to drafting and advising on IP issues in corporate and commercial transactions, particularly in relation to licensing, franchising, regulatory advice, entertainment, sponsorship and merchandising.

Sri holds a Bachelor of Laws (LLB) (Hons) Degree from King’s College London, United Kingdom. He was awarded the Malaysian Law Scholarship 1999, which is a full scholarship awarded by University of London to read law at King’s College London for the 2nd and 3rd year of the LLB degree.

Qualifications
  • LLB (Hons), King’s College London, United Kingdom
  • Certificate in Legal Practice (CLP)
  • AIAC Certificate Programme in Sports Arbitration (2016)
Admissions
  • Malaysian Bar
  • Registered Trademark Agent
  • Registered Industrial Design Agent
Languages
  • English
  • Bahasa Malaysia
  • Tamil
Accolades
  • Ranked as “Trade Mark Star” by IP Stars, Managing IP
  • Ranked as “Litigation Star” by Benchmark Litigation
  • Ranked as “Leading Individual” by Legal 500
  • Ranked as “Distinguished Practitioner” by Asialaw
  • Ranked as “IP Expert” by Asia IP
  • Ranked on Silver Tier – Prosecution and Strategy; Enforcement and Litigation; and as a Recommended Individual for Transactions by World Trademark Review
  • Ranked on Band 3 by Chambers & Partners 2024
  • Ranked as “40 Under 40” legal professionals in Asia in 2017 by Asian Legal Business
Publications
  • The Malaysian Chapter, The Technology Disputes Law Review, Third Edition, 2023
  • The Law Review 2022, Volume 1, Sweet & Maxwell, “Authorship or Inventorship versus Ownership under the Malaysian Patents and Copyright Regime for Works Created in the Course of Employment”.
  • Chapter on Intellectual Property in Bullen & Leake & Jacob’s Malaysian Precedents of Pleadings, 2nd Edition & 3rd Edition.
  • Chapter on Entertainment Law in Bullen & Leake & Jacob’s Malaysian Precedents of Pleadings, 2nd Edition.
  • World Trademark Review, “Seven counterfeit hotspots in Malaysia that brand owners must be aware of”, 15 April 2020.
  • The Sun, Legally Speaking column, “The Trademarks Act 2019 and the Madrid Protocol”, 2 March 2020.
  • G3 Magazine, International Association of Gaming Advisors (IAGA), “Malaysia: tax, licence and duty hikes add to operator pressure”, October 2020.
  • World Trademark Review, Federal Court puts an end to battle over ‘Mc’ prefix”, September 22, 2009.
  • Managing Intellectual Property, Malaysia IP Focus 2007, 2nd Edition, “Trade Description Orders: Handle with care”.
Market Leading Experience

Intellectual Property

  • Patent infringement and invalidation action wherein he acted for a renowned multinational medical device company in their action against another renowned multinational medical device company in respect of the patent of a medical device.
  • Patent invalidation actions where we assisted the owner of a patent on an invention used in the oil palm industry to defend the validity of the patent against invalidation actions instituted by several different parties.
  • Patent infringement and invalidation action wherein he acted for a renowned glove manufacturer in defending an action brought by a competitor in relation to a glove manufacturing system.
  • Patent infringement and invalidation action wherein he acted for a company offering imaging technology and innovative security solutions in an action instituted by a competitor.
  • Acted and succeeded in a patent infringement suit for a well-known Muslim fashion brand in Malaysia.
  • Industrial design infringement and revocation action wherein he acted for a well-known soft drinks and beverage maker against its competitor in respect of the industrial design of a beverage bottle.
  • Industrial design infringement action wherein he acted for the owner of technology communication devices in enforcing its registered industrial design against a competitor which used similar devices.
  • Copyright infringement action wherein he acted for a motorcycle manufacturer in relation to an action filed by a renowned multinational motorcycle manufacturer.
  • Acted for a manufacturer of waste water treatment machine in a copyright infringement action against ex-employees who misappropriated company trade secrets and set up a competing business.
  • Represented operators of karaoke outlets in dispute against copyright licensing bodies.
  • Acted for local companies defending a suit for breach of confidence, breach of fiduciary duty, etc.
  • Acted and succeeded in a trade mark infringement and passing off action for a renowned international hotel chain against a local hotel.
  • Acted and succeeded in a trade mark cancellation action for a multinational consumer care products company against a former distributor in Malaysia.
  • Trade mark infringement and passing off action wherein he assisted an exhibition organizer in resisting an action filed by its competitor.
  • Trade mark cancellation action wherein he assisted a Middle Eastern fast food chain in cancelling the trade mark registration of its competitor.
  • Trade mark cancellation action wherein he assisted a multinational learning and educational tools company in cancelling the trade mark filed by a local company.
  • Assisted a renowned foreign tea manufacturer in negotiating the assignment of a trade mark filed by a local company in Malaysia.
  • Acted for a local leading car windshield repair shop in settling a trade mark dispute.
  • Acted and succeeded in a High Court action in relation to a domain related to the large real estate developer in China.

Advertising and Media

  • Acted and succeeded in the first contested adjudication before the Communications and Multimedia Content Forum (CMCF) in respect of a broadcast advertisement for a leading global oil company.
  • Acted and succeeded in a contested adjudication action before the Communications and Multimedia Content Forum (CMCF) and Advertising Standards Authority Malaysia (ASA) in respect of broadcast and published advertisements for a renowned multinational consumer product company.
  • Advised a renowned car manufacturer in their advertising campaign in Malaysia.
  • Advised a well known multinational consumer product company in relation to the advertising campaigns in Malaysia.
  • Experienced in media related work, where he has advised major international music publishing companies, major Malaysian movie distribution company, well known artists, musicians and workers in the creative field on broad areas of media and IP-related issues.

Licensing and Franchising

  • Advised a world-renowned Spanish fashion designer and his company on various franchise issues in relation to its franchise business in Malaysia which relates to sale of men’s and women’s footwear and handbags designed by the designer best known for his signature line of high-end and exclusive women’s footwear.
  • Assisted and advised a well-known Malaysian multinational low-cost airline in the registration of the franchise for their restaurants and cafes.
  • Acted and assisted a large Japanese bookstore chain in relation to their franchise application with the Malaysian Franchise Registry.

Domain Name Disputes

  • Acted and succeeded in a domain name dispute resolution (DNDR) proceedings in relation to a domain related to a budget airline.
  • Acted and succeeded in a domain name dispute resolution (DNDR) proceedings in relation to a domain related to a renowned multinational technology.
  • Acted and succeeded in a domain name dispute resolution (DNDR) proceedings in relation to a domain related to an international car rental service provider.
  • Acted and succeeded in a domain name dispute resolution (DNDR) proceedings in relation to a domain related to one of the world’s leading suppliers of products and solutions based on advanced opto-electronics and precision technologies.
  • Acted and succeeded in a domain name dispute resolution (DNDR) proceedings in relation to a domain related to a large real estate developer in China.
  • Acted and succeeded in a High Court action in relation to a domain related to the large real estate developer in China.
  • Acted and succeeded in a domain name dispute resolution (DNDR) proceedings in relation to a domain related to a Malaysian multinational electricity company.

Sports & Gaming

  • Participated in the drafting of the Safe Sports Code which is under the purview of the Ministry of Youth and Sports.
  • Advised on various gaming or gambling matters. Most of the advice to clients are focused on whether setting up an online casino or gambling platform is permissible under the current Malaysian gambling laws.
  • Other examples of work done in gaming or gambling sphere would include, among others, providing advice on whether the operation of fantasy sports is allowed in the jurisdiction, loot box regulations in Malaysia and the issue of placement of gaming servers within and outside of the jurisdiction.
  • Advised on legal issues in respect of the business of sport including the preparation and oversight of strategic, transactional and compliance documentation for the setting up, launch and ongoing operations of sports channels and events, the negotiation and drafting of all related agreements and documents for the broadcast and license of local and international sports content including collaborations with local and international sports associations and the provision of broadcast and production services for local and international sports events such as the Asian Games and the SEA Games, and brand ambassador and talent engagement agreements for sports personalities and newsreaders.
  • Assisted and advised a Malaysian professional racing driver on issues such as sponsorship agreements, setting up of business entities and issues relating to esports in relation to the setting up of his sports related company ventures, a full-service consultancy company functioning as specialists and representatives within professional sports and virtual racing grand prix.
  • Assisted a former national football player in the setting up of a youth football academy, drafting of agreements between the new setup, the sponsors and the relevant parties.

Technology and Telecommunications

  • Participated in the revision and drafting of the Malaysian Communications and Multimedia Content Code.
  • Advised and represented a telecommunication company involved in the setting up of telecommunication infrastructure in an arbitration relating to breach of IP clauses and breach of contract, among others.
  • Acted for a multinational company involved in the manufacture and sale of consumer products in an arbitration involving breach of IP clauses and breach of contract, among others.
  • Acted for a power utility company in Sabah in an arbitration involving a dispute on system integration and breach of contract.

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