Intellectual Property, Sports & Gaming

Overview

The Intellectual Property, Sports & Gaming practice group comprises of lawyers who specialise in the protection and resolution of issues / disputes relating to intellectual property matters, both contentious and non-contentious. The firm acts and represents MNCs and conglomerates across a wide range of industries, including, among others, Multimedia and Telecommunication; Pharmaceutical & Cosmetics, Aviation & Aerospace; Food & Beverage; E-Commerce; Industrial and Fast Moving Consumers Goods; Electrical and Electronics; and Statutory Bodies.

Our Practice

Our practice includes the following areas:

Trademarks
Industrial Design
Patents and Utility Innovations
Confidential Information and Trade Secrets
Copyright
Geographical Indications
IP litigation / Dispute Resolution
Enforcement of IP rights including designing anti-piracy and anti-counterfeiting programmes
Licensing and Franchising
Domain Name Disputes
Advertising laws and regulations
Injunctions and Anton Piller
Commercial Exploitation of IP rights including licensing and Franchising
IP management, due diligence and audit
Regulatory Advice on product registration and cosmetic notification; food, drug and labelling laws.
Information Technology and related agreements and disputes
Media and Entertainment law
Technology Disputes

Our Pragmatic Approach

The practice group takes pride in delivering client-oriented legal IP services by adopting the following practices:

Quality: All matters are personally handled by partners who have extensive and exclusive experience in the field of Intellectual Property of more than 20 years. In addition to this, our IP practitioners are multi-lingual and proficient in multiple languages, including English, Mandarin, Malay, Cantonese, and Tamil;
Quick Turnaround Time and Accessibility: All work entrusted to us would be dealt under the direct supervision of one of the partners personally for a fast turnaround time and ensuring that all work delivered are of the highest quality;
Value Added Services: The practice group issues periodical updates to clients on latest developments on IP related news and developments to keep clients abreast on fast developing issues; and
Competitive Fee Structure: Our fee structure is very competitive and client-oriented. We believe in helping our clients in reducing their legal costs, significantly meeting their budget needs and fostering a mutually beneficial long term working relationship.

Our Market Recognition

We are privileged and grateful for our achievements as a practice group and individual partners to be acknowledged and recognised as follows:

Awards

Rankings

Legal 500 2023 – Ranked Tier 1 for Intellectual Property
Asia IP 2024 – Tier 1 for Copyright; Tier 2 for Trademark Prosecution; Tier 3 for Trademark Contentious, Patent Prosecution and Patent Contentious
Managing IP – IP Stars and “Highly Recommended’ (Tier 1) for Copyright and Related Rights; Tier 2 for Trademark Disputes and Tier 3 for Patent Disputes.
Chambers Asia Pacific 2023 – Ranked Band 3 for Intellectual Property
ALB Asia 2023 – Tier 2 for Intellectual Property
Asialaw Profiles 2023 – Recommended Law Firm for Intellectual Property
Benchmark Litigation 2023 – Litigation Star and Ranked Firm

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, 2^nd Edition & 3^rd
Chapter on Entertainment Law in Bullen & Leake & Jacob’s Malaysian Precedents of Pleadings, 2^nd
World Trademark Review, “Seven counterfeit hotspots in Malaysia that brand owners must be aware of”, 15 April 2020.
G3 Magazine, International Association of Gaming Advisors (IAGA), “Malaysia: tax, licence and duty hikes add to operator pressure”, October 2020.

Our Experience

Dispute Resolution and Enforcement

The following are some of the cases that the practice group has been involved in:

Patent infringement and invalidation action 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 we 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 we 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 we 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 we 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 we acted for a motorcycle manufacturer in relation to an action filed by a renowned multinational motorcycle manufacturer.
Acted for a manufacturer of wastewater 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 trademark infringement and passing off action for a renowned international hotel chain against a local hotel.
Acted and succeeded in a trademark cancellation action for a multinational consumer care products company against a former distributor in Malaysia.
Trademark infringement and passing off action wherein we assisted an exhibition organizer in resisting an action filed by its competitor.
Trademark cancellation action wherein we assisted a Middle Eastern fast-food chain in cancelling the trademark registration of its competitor.
Trademark cancellation action wherein we assisted a multinational learning and educational tools company in cancelling the trademark filed by a local company.
Assisted a renowned foreign tea manufacturer in negotiating the assignment of a trademark filed by a local company in Malaysia.
Acted for a local leading car windshield repair shop in settling a trademark dispute.
Acted and succeeded in a High Court action in relation to a domain related to the large real estate developer in China.
Assisted and advised many multinational companies (including luxury goods manufacturers, fashion brands, major sports manufacturers, automotive parts manufacturers, consumer goods, etc.) on enforcement strategy against counterfeits; coordinated and executed criminal raids with law enforcement officers.

Breach of Confidential and Trade Secrets

Represented ex-employees of a software company in an action for copyright infringement, breach of employment contract and duty of fidelity / fiduciary / trust, breach of confidence and conspiracy / unlawful interference with trade.
Represented an international training company in an action for breach of employment contract and duty of fidelity / fiduciary, copyright infringement, breach of confidence and unlawful interference with trade.
Acted for a renowned awning company in action against ex-employees for breach of confidence, breach of trade secrets, among others.

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 we have 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.

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 and 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.
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 Disputes and Multimedia

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.

Media and Entertainment

Acted for China’s largest online streaming platform in enforcement actions against pirate streaming websites.
Advising two of the largest music publishers in Malaysia on intellectual property related issues.
Acting as liaison for one of Malaysia’s largest movie distributor in defending a copyright infringement suit in Hong Kong