“It is important to understand the nature of your clients’ business to appreciate their priorities and goals so that advice provided to clients is practical and of commercial value”. – Henry Phoon
Henry handles all aspects of Intellectual Property matters related to trademarks, patents, industrial designs, copyright, geographical indications, domain names and trade secrets. Over the years, he has advised and represented many foreign and local clients ranging from Fortune 500 entities to Small & Medium-sized Enterprises (SMEs) in prosecuting their trademarks, patents and industrial designs in Malaysia and abroad.
Henry’s portfolio also includes the formulation of Intellectual Property strategies, conducting Intellectual Property due diligence, as well as negotiating, drafting and reviewing various Intellectual Property agreements and other Intellectual Property related legal documents. Henry is also experienced in advising on Intellectual Property monetisation (e.g. valuation and securitisation) and commercialisation (e.g. licensing and franchising).
In the field of contentious Intellectual Property, Henry is also focused on his practice as an advocate and actively involved in Intellectual Property litigation. Henry frequently appears before the Malaysian Courts for Intellectual Property disputes.
Henry works in close cooperation with the Malaysian Ministry of Domestic Trade and Consumer Affairs in preventing infringing products and counterfeits from being distributed and sold in Malaysia. His enforcement practice focuses on developing anti-counterfeiting strategies which aligned with the clients’ global and local brand management.
Well-versed in matters concerning information technology and personal data protection laws, Henry also regularly advises and assists clients on IT agreements as well as on data protection, e-commerce and internet regulatory issues.
Henry’s extensive experience in IP has earned him recognition as “Malaysia Top 50 IP Experts” by Asia IP Experts 2022.
Experience
Represented a multinational beverage company against a local beverage manufacturer for trademark infringement and passing-off
Represented a luxurious hotel brand owner against an international real estate company for trademark infringement and passing-off
Represented an international food company against a local food manufacturer and distributor for copyright infringement and passing-off
Represented a multinational real estate company against a local residential developer for trademark infringement and passing-off
Represented a public listed publishing company in defending copyright infringement action
Represented a luxurious hotel brand owner in an action to enforce letter of undertaking against trademark infringer
Represented a restaurant chain in trademark cancellation and passing-off action
Represented a local rice manufacturer in defending trademark infringement, trademark cancellation, copyright infringement and passing off action
Represented a local footwear manufacturer in resisting Trade Description Order
Represented a local media company in defending criminal charges for alleged copyright infringement in using unlicensed software
Advised a Fortune 500 tobacco company in invalidating patent of a multinational tobacco company which in line with parallel patent invalidation proceedings in other countries
Advised a public listed bank in invaliding utility innovation of a multinational retail technology company
Managing the local portfolios of Intellectual Property rights for numerous foreign clients ranging from Fortune 500 entities to start-ups
Managing the local and international portfolios of Intellectual Property rights for numerous Malaysian entities ranging from public listed companies to Small & Medium-sized Enterprises (SMEs)
Reviewing and drafting license agreements, non-disclosure agreements, franchise agreements and other Intellectual Property related documents for various companies and entities
Drafting terms and condition and privacy policies of use for major online websites and mobile applications
Education
Qualifications
Advocate and Solicitor, High Court of Malaya
Registered Patent Agent
Registered Trademark Agent
Registered Industrial Design Agent
Registered Geographical Indication Agent
Professional Associations and Memberships
Member, Malaysian Intellectual Property Association (MIPA)
Member, Asian Patent Attorneys Association (APAA)
Member, Licensing Executives Society Malaysia
Languages
English
Bahasa Malaysia
Mandarin
Chinese dialects:
Cantonese, Hakka
