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Shearn Delamore & Co.

Indran Shanmuganathan

Indran Shanmuganathan

Partner

Expertise

  • Competition Law & Antitrust
  • Intellectual Property
  • Personal Data Protection and Privacy Laws

WSG Practice Industries

Activity

WSG Leadership

Competition Law & Antitrust
Chair
Patent Law Workshop Group
Member
Profile
Indran's practice largely involves seasoned IP litigation relating to Trademark, Copyright, Patent and Industrial Design litigation. Indran regularly appears as Lead Counsel in complex and novel cases some of which now serve as landmark IP cases which encompass cutting edge IP issues in the High Court, Court of Appeal, and the Federal Court (Apex Court). He has also been sought out to do Counsel work for both IP and civil commercial litigation matters.

Indran was the Lead Counsel in a historic landmark case [MERCK SHARP & DOHME GROUP & ANOR v. HOVID BHD [2019] 9 CLJ 1] which successfully resulted in the extremely rare occurrence of the Federal Court overturning one of its previous decisions. Given that this feat has been achieved only 6 times in Malaysia's history since 1967, he stands as the first IP lead counsel in the first IP case before the Federal court in Malaysia to achieve this credential He has also been recognised and listed as one of the "World's leading IP strategists." Indran has been accorded the accolade of "Asialaw Regional Award 2019 for Outstanding Practitioner in Malaysia." He has advised and litigated on IP issues with major industry players from a varied cross section of industries such as major renowned worldwide sporting bodies, pharmaceutical companies, automotive companies, hotels chains, restaurants and various consumer product companies on IP rights and disputes. He continues to be actively involved in IP enforcement and anti-counterfeiting work often collaborating with government bodies.

Indran's varied non contentious IP portfolio often sees him sought out for tailor made niche advisory services to clients which broadly include transactional work, IP registration, due diligence exercises, implementation of IP protection strategies, advisory, drafting and regulatory processes relating to various IP, IT, E-commerce, Tech and Franchise Agreements, Media Broadcasting (Advertising) and the Communication and Multimedia Act amongst others. His experience further extends to Pharmaceutical and Food Advertising, Domain Name Disputes, licensing, sponsorship, and merchandising matters. He also advises on matters relating to Personal Data Protection & Privacy Laws and on Competition Antitrust related work to compliance including the preparation of competition policy, competition dispute resolution.

Bar Admissions

● England & Wales (1996)
● Malaysia (1997)
● Singapore (2002)

Education

● LL. B (Hons), University of Leicester
● Barrister-at-Law, Lincoln's Inn
● Advocate & Solicitor, High Court of Malaya
● Advocate & Solicitor of the Supreme Court of the Republic of Singapore
● Trademark Agent and Industrial Design Agent
● Geographical Indications Agent
Areas of Practice

Competition Law & Antitrust | Intellectual Property | Personal Data Protection and Privacy Laws

Professional Career

Significant Accomplishments

● Asialaw Regional Awards (2019) - "Outstanding Practitioner" (Malaysia)
● Asia Law Client Service Excellence Ratings (Malaysia) 2019 - Rated "Best Lawyer" (Malaysia)
● Asialaw Leading Lawyers (2017 - 2019) - "Leading Lawyer" in Competition & Antitrust
● Asialaw Leading Lawyers (2017 - 2019) - "Leading Lawyer" in Intellectual Property
● Asialaw Leading Lawyers (2020 and 2021) - "Distinguished Practitioner" in Intellectual Property
● Asia Business Law Journal (2020) - Listed as one of Malaysia's Top 100 Lawyers
● Benchmark Litigation Asia-Pacific (2020) - "Litigation Star" in Dispute Resolution and Intellectual Property
● Chambers Asia-Pacific (2019 - 2021) - "Band 2" in Intellectual Property
● The Legal 500 Asia-Pacific (2014, 2017 - 2020) - "Recommended Lawyer" in Intellectual Property
● MIP IP Stars (2018 - 2020) - Trademark Star in Malaysia
● MIP IP Stars (2018 - 2020) - Patent Star in Malaysia
● IAM Patent 300: The World's Leading IP Strategists (2020) - Listed individual in the exclusive list of the "World's Leading IP Strategists"
● IAM Patent 1000 (2019) - Recommended Lawyer in Litigation and Transactions
● World Trademark Review (2019 and 2020) - "Gold Tier" in Enforcement and Litigation
● World Trademark Review (2017 and 2018) - "Silver Tier" in Enforcement and Litigation
● World Trademark Review Global Leaders (2019 and 2020) - Private Practice

Professional Associations

● Council Member, Asian Patents Attorneys Association of Malaysia (APAA)
● Member of Governing Council, Asean Legal Information Centre (Asean LIC)
● Member, Malaysian Bar
● Member, The Honourable Society of Lincoln's Inn
● Member, International Bar Association (IBA)
● Member, International Trademarks Association (INTA)
● Member, Malaysian Intellectual Property Association (MIPA)
● Member, Pharmaceutical Trademarks Group (PTMG)
● Member, The Honourable Society of Lincoln's Inn Alumni Association, Malaysia
● Member, University of Leicester Alumni


Professional Activities and Experience

He regularly appears as Lead Counsel in complex and novel cases or appeals which encompass cutting edge IP issues across all levels of the Malaysian courts. Over the last 2 decades, Indran is often sought out for his expertise towards formulating litigation strategies and for IP start-up / management issues. Throughout his litigation career, he has worked with various professionals and experts globally, across various industries to formulate bespoke case strategies tailored for the succinct or variable need in the case. To this end, he has obtained recognition as one of the "World's leading IP strategists". His litigated cases have been reported and have also provided, reference and/or precedent value which have also served as landmark decisions. Here are just some of those reported noteworthy cases:

● MERCK SHARP and DOHME CORP.("MSD") v HOVID BERHAD [2019] 9 CLJ 1

► [Federal Court Civil Application No. 08-470-10/2017]

♦ Indran acted for the pharmaceutical giant, Merck Sharp & Dohme (MSD), the proprietor of the 194 Patent, and its local licensee, in patent infringement action against Hovid Berhad ("Hovid"). In this case, the High Court and Court of Appeal were bound by the Federal Court case of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutters Industries Sdn Bhd & Anor [2015] 6 MLJ 293 ("SKB Shutters case"). Indran successfully led and argued during the Appeal to the Federal Court, to overturn the binding case on a question of law, where the majority of the Federal Court departed from its own previous decision. Quite apart from the fact that it is indeed very rare for the Federal Court to depart from its previous ruling, the impact of the case, has also proved to be far reaching. Mention must be made that this is only the 6th time in the nation’s history since 1967 where a counsel has been able to persuade the Federal Court to overrule its previous decision to set a new path to the law and this case also remains to be first IP case in the Federal court to be overturned.

♦ Other than the significance in terms of the rarity of the decision as alluded to above, the impact of the decision is also far reaching. The status of dependant claims which were long recognised as a fall back on narrower claims in the event, that the broader independent claims were found to be invalid has now been restored. Potentially, 100,000 patent grants/ applications would have been affected if not for the outcome of the MSD case. In fact, there was lobbying carried out by various quarters in the IP industry to have the Patents Act amended post the SKB Shutters case to deal with the difficulties created by the SKB shutters ruling which now may no longer be necessary.

♦ This decision has been welcomed both locally and globally by practitioners and patentors alike, for the impact it has made in the law. This decision now resolves the dilemma that patent drafters had previously faced on how claims were to be drafted and the level of consistency required between Malaysian patent claims and patent claims in other jurisdictions. This decision resulted in the Malaysian practice to be once again aligned with the position in most jurisdictions. This case, while setting the historic standard is also a reported landmark decision with great precedent value. It has also received extensive global and local attention where the decision has been the subject of commentary and publishing interest.

● LIWAYWAY MARKETING CORPORATION v OISHI GROUP PUBLIC COMPANY LIMITED [2017] 4 MLJ 141]

► [Civil Appeal No 02(i)-57-09 of 2015] (Federal Court)

♦ Indran was instructed by the Appellant to lead and argue this appeal to the Federal Court on pertinent questions of law surrounding the concept of non-use of registered trademarks under The Trademarks Act 1976. The dispute surrounded competing rights to the trademark OISHI as well as the factors to be considered in expunging a trademark from the register of trademarks on the grounds of non-use. In deciding in favour of the Appellant, the Federal Court considered and provided precedent value for the standard and burden of proof for survey evidence and this case remains the leading authority on survey evidence. Also, of precedent value is the position of the party who is first to assert rights to a trademark in Malaysia although not necessarily being the first party in the course of trade, to use the said trademark.

● YONG SZE FUN & ANOR (T/A PERINDUSTRIAN MAKANAN & MINUMAN LAYANG-LAYANG) v SYARIKAT ZAMANI HJ TAMIN SDN BHD & ANOR [2012] 1 MLJ 585

► [Civil Appeal No W-02-367 OF 2006] (Court of Appeal)

♦ Indran represented the Plaintiffs in the Court of Appeal which involved a dispute over the trademark TAMIN. This reported case has provided a good and sound precedent reference for laying down the principles for passing off. The Court of Appeal in finding for the Plaintiffs, set out and confirmed the necessary prerequisites to sustain an action in passing-off. Particularly important is the determination on priority in terms of rights to a trademark or get-up in Malaysia as well as the threshold to show actionable misrepresentation. The case provided further precedent value by stating the circumstances where a licensee could commence an action for passing-off and whether third parties unconnected with the genuine products could rely on the purported relationship between the licensor and licensee as a defence.

● MEIDI (M) SDN BHD v MEIDI-YA CO LTD, JAPAN & ANOR [2008] 6 MLJ 433

► [Civil Appeal No W-02-563 OF 1998] (Court of Appeal)

♦ Indran successfully represented the Appellant, Meidi (M) Sdn Bhd in this Appeal which also went on to become a reported decision with precedent value. This decision provided precedent value with regards to the point on the finding of the territorial scope of trademark protection and priority in terms of rights to a trademark in Malaysia. The Court of Appeal further considered the circumstances where trademarks could co-exist both on the register and in the market.

● MEIDI-YA CO LTD, JAPAN & ANOR v MEIDI (M) SDN BHD [2009] 2 MLJ 14

► [Civil Appeal No. 02-8 OF 2007(W)] (Federal Court)

♦ This case was an appeal by the Meidi-Ya Co Ltd, Japan against the decision of the Court of Appeal in civil appeal no: W-02-563. In dismissing the appeal, the Federal Court held that the questions for which leave was sought did not pass the then requisite threshold for leave as set out in the Courts of Judicature Act. It should be noted that this reported case carried precedent value for setting the threshold for leave at that time.

● MCLAREN INTERNATIONAL LTD v LIM YAT MEEN [2009] 5 MLJ 741

► [Civil Appeal No 02(f)–2 OF 2008(W)] (Federal Court)

♦ Indran represented McLaren in this appeal to the Federal Court which was a reported landmark decision as well. The Federal court determined the necessary threshold for locus standi as an aggrieved party before a cancellation action could be instituted. The Federal Court held that the Plaintiff in such an action should have used of the trademark in issue or had a genuine trading interest or future interest in the said trademark. The Federal Court also considered what amounted to requisite use of a trademark in the context of an action for cancellation of a registered trademark on the grounds of non-use. It must be pointed out that this reported case still sets the threshold test at present to determine the locus standi for an "aggrieved party."

● EL BAIK FOOD SYSTEMS CO. S.A. v THE REGISTRAR OF TRADEMARKS AND AL BAIK FAST FOOD DISTRIBUTION CO. SAE [2019] MLJ 552
► [Kuala Lumpur Originating Summons No. WA-24IP-4-01/2019] (High Court)

♦ Indran acted for the Saudi based food and beverage outfit El Baik Food Systems Co. S.A. ("the Plaintiff") in an appeal at the High Court from the decision of the Registrar of Trademarks in a Trademark opposition matter. This case was the final saga of an extensive dispute between the Plaintiff and Albaik Fast Food Distribution Co SAE over competing rights to the ALBAIK trademark. The High Court, as a novel point accepted the concept of "spill-over and cross border goodwill" without the necessity of physical business presence in Malaysia. In finding for the Plaintiff, the High Court held that the lack of physical presence did not preclude the Plaintiff from claiming goodwill and reputation in Malaysia thereby granting the Plaintiff priority over the Defendant. This case is also of worthy precedent value and was duly reported.

● GODREJ SARA LEE LTD v SIAH TEONG TECK & ANOR (PART 2) [2007] 7 MLJ 164

► [Originating Motion No. D5-25-2 of the 2007] (High Court)

♦ Indran represented the Plaintiffs in this matter to lead and argue the case which dealt with the requisite evidentiary standard to show non-use of a trademark to sustain an action for cancellation of a registered trademark. In finding for the Plaintiff, the High Court also addressed the issue of what would amounted to special circumstances to excuse the non-use of the trademark. This case carries precedent value and has since been reported.

● NEW-WEST MANAGEMENT GROUP SDN BHD & ANOR V NG AH KOW & ANOR [2008] 8 CLJ 18

► [Suit No. D5-22-1090-2007] [2008]

♦ Indran represented the Plaintiff successfully in this action for passing-off and breach of contract. To preserve its position, the Plaintiff applied for an interlocutory injunction to restrain the Defendant from using the offending trademark and tradename. This case is important as the Plaintiffs sought to restrain the Defendants from using their own names in their clinic business after the Defendants had transferred rights to the same to the Plaintiff. The High Court in granting the interlocutory injunction held that notwithstanding the fact that the Defendants were only requiring the use of their own names, they were not entitled to derogate from a grant that they had contractually given to the Plaintiffs for good and valuable consideration. The High Court in finding for the Plaintiff also set out and reaffirmed the necessary requisites for interlocutory injunction. This reported case is also important for precedent value as it sets out the exceptions under the Contracts Act where terms in restraint of trade could be enforced.

● USA PRO IP LIMITED v MONTFORT SERVICES SDN BHD [2015] MLJ 454)

► [Originating Summon No: 24IP - 9 - 03/2014] (High Court, Court of Appeal and Federal Court)

♦ Indran represented the Plaintiffs in this case which was originally heard in the High Court where the Plaintiff applied to expunge the Defendant's registered trademark on the grounds of non-use. In finding for the Plaintiff, the High Court set out the requisite burden and standard of proof necessary to show non-use. The High Court further clarified the relevant period of non-use and whether the absence of survey evidence was fatal to such application thereby setting crucial precedent value. The Defendant’s appeal to the Court of Appeal was dismissed and leave to appeal to the Federal Court was not granted thereby affirming the decision at first instance.
Articles

Trademark Act 2019 with overview by Indran Shanmuganathan and The Annotated Trademarks Act 2019
Shearn Delamore & Co., October 2021

Dear valued clients, colleagues and friends, With the enactment of the latest Trademark Act 2019, our Intellectual Property partner, Indran Shanmuganathan, has authored two books published by renowned publishers, Sweet & Maxwell namely “Trademark Act 2019 with overview by Indran Shanmuganathan” and “The Annotated Trademarks Act 2019” which is a part of Malaysian Legislation Series...

Shearn Delamore & Co Legal Update February 2021 (Financial Services, Intellectual Property, Tax & Revenue)
Shearn Delamore & Co., March 2021

FINANCIAL SERVICES BNM announces new funds for SMEs On 5 February 2021, Bank Negara Malaysia ("BNM") announced: an additional RM2 billion for the Targeted Relief and Recovery Facility (“TRRF”); the establishment of a RM200 million Disaster Relief Facility (“DRF”) 2021.   TRRF The TRRF was a facility announced in the Budget 2021, established to assist eligible SMEs in the services sector...

Shearn Delamore & Co. Legal Update February 2021
Shearn Delamore & Co., February 2021

DISPUTE RESOLUTIONWide order of injunction sought against online marketplace operator refused in the High CourtE-commerce has become an indispensable part of the country’s economy particularly with the Covid-19 pandemic. With its growing demand come legal challenges which are novel to Malaysia.Recently, our Dispute Resolution Partners K...

Additional Articles

Articles & Publications:

● Author: "Trademarks Act 2019 with Overview by Indran Shanmuganathan" Sweet & Maxwell (2020).
● "The Rise and Fall of SKB Shutters Case", Legal Era Publication November 2019
● "Merck Finally Shuts the Door of SKB Shutters", Managing IP-IP Stars, October 2019
● St.John Ambulans Malaysia v PJ Uniform Sdn. Bhd. (SAHC 22NCvC-148-02/2013) Civil Appeal No. B-02(NCVC)(W)-2188-11/2016)
● "In Ratio & Obiter: Lessons from Liwayway Marketing Corporation v. Oishi Public Company Limited", Asia IP, 2017
● Co-author Trademark Litigation Handbook - Thomson Reuters, 2017
● "Automobile Component Parts: Registrable Design or Not?" Asia IP, 2015
● "Are Cancellation Actions still a viable option?" Asia IP, 2013
● "Registered User Conundrum", Managing IP, 2013
● Co-author Trademark Litigation Handbook - Thomson Reuters, 2013
● "When Fame is Not Enough," Managing IP, 2010
● "Use it or Lose it" Managing IP, December 2009.
● "To Cancel or Not to Cancel?" Asia IP Focus, October 2009.
● The Territoriality of Goodwill: The Way Forward in Claims in Passing-off Asia IP 2009.
● "Internet Piracy-Copyright Infringement and Adequacy of Malaysian Law" The Malaysian Accountant June 2007


WSG's members are independent firms and are not affiliated in the joint practice of professional services. Each member exercises its own individual judgments on all client matters.

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