Chew, Kherk Ying

Kherk Ying Chew

Biography

Kherk Ying Chew heads the Intellectual Property and Dispute Resolution Practice Groups of Wong & Partners. She has decades of experience in IP, commercial litigation, corporate compliance, information technology and Internet regulatory issues.

Ms. Chew has been named among the Commended External Counsels of the Year 2017 by the In-House Community. She is also one of two Malaysians ranked in Top 250 Women in IP 2017 by Managing IP. She is ranked in the first tier of IP practitioners in Malaysia by Chambers Asia and Asia Pacific Legal 500. According to Chambers Asia Pacific, Ms. Chew is "an acclaimed figure in the sector, drawing praise as a lawyer who is 'really commercial, very practical' and 'knows her subject impressively well'". Asia Pacific Legal 500 had previously commented that she is "highly respected for contentious and non-contentious work" and has won "an important precedent-setting case for Malaysian software copyright law.”

Ms. Chew is highly regarded for IP litigation, and has been recognised as a Market-leading Lawyer for Dispute Resolution & Litigation, Intellectual Property by Asialaw Leading Lawyers 2017. She is also listed as a recommended expert for trademark enforcement and litigation, trademark prosecution and strategy by World Trademark Review 1000, 2017; while IAM Patent 1000, 2017 has listed her as a recommended expert for patent prosecution and a highly recommended expert for patent litigation and transactions.

Ms. Chew is a registered trade mark, patent and design agent in Malaysia and the principal author of the CCH published Intellectual Property Laws of Malaysia. She is among the few selected trainers for an IP valuation course by Intellectual Property Corp of Malaysia (MyIPO) and is an accredited IP valuer by the World Trade Institute.

Practice Focus

Ms. Chew handles all aspects of IP matters concerning copyright, patent, trade and service marks, registered designs, trade secrets and confidential information. Her portfolio also includes enforcement and litigation action in relation to IP infringement, passing off and anti-counterfeiting actions, opposition and rectification proceedings, as well as filing and prosecution of design, trade/service marks and patents. She is also experienced in advising on complex IP issues relating to commercialisation and licensing, corporate transactions, valuation and securitisation.

Ms. Chew regularly advises and assists clients on IT and outsourcing agreements, know-how and design contracts, computer contracts, distributorships, data privacy and protection, franchising and licensing, product registration, advertising and media law, as well as on telecommunications, pharmaceutical, healthcare, e-commerce, social media and Internet regulatory issues. 

She is also focused on her practice as an advocate, and is regularly involved in the various stages of dispute management in both court and arbitration proceedings. In respect of civil litigation, she handles all aspects of commercial disputes, employment disputes, disputes arising from and/or relating to winding-up, restructuring schemes involving capital reductions, breach of directors’ duties, liquidation, and a variety of contentious agreements. She is also experienced in obtaining ex parte injunctions, Mareva injunctions and other interim reliefs, contracts, and torts including negligence, misrepresentation, nuisance, and defamation. 

Her portfolio also includes the drafting of various pleadings for court proceedings, which include summary judgment, security for costs, third party proceedings, reciprocal enforcement of judgments, committal and garnishee proceedings. She has experience in advocacy at all stages of the litigation process which includes full trials and a variety of interlocutory proceedings. She has obtained a multitude of orders from court — including injunctions, stay of proceedings or execution, declarations and specific performance — and is also involved in the enforcement by way of Anton Piller, Mareva and Trade Description Orders.

In corporate compliance, Ms. Chew continues to advise multinational corporations on developing internal policies, procedures, and code of conduct. Her work includes developing and managing corporate compliance programmes, particularly in internal investigations, audits and necessary trainings in mitigating risks from cybersecurity fraud or of non-compliance with anti-corruption regulations. She has represented companies in investigations by the local anti-corruption agency and advised on legal remedies upon discovery of fraud or corruption.

Representative Legal Matters

  • Advised clients in every commercial aspect of their IP asset, from conducting comprehensive due diligence and valuation exercises as part of a corporate transaction to executing internal audits and assessment of IP portfolio for purposes of streamlining of ownership in view of optimising tax and transfer pricing considerations. Assisted clients in creating new systems and internal frameworks for greater efficiency in the management of their IP assets.

  • Successfully represented major corporations in numerous high-profile IP litigation cases, including a securing a landmark decision in a patent infringement case that clarifies important principles for determining anticipation and inventive steps under the Malaysian patent law, the first Malaysian IP case that dealt with the issue of landlord liability in a trademark infringement suit, as well as the first copyright infringement case in Malaysia that comprehensively dealt with copyright protected elements of a computer software.

  • Secured a landmark decision in a civil action by a Malaysian based IT solutions company against its ex-employees for copyright and software architecture infringement, breach of confidence, breach of fiduciary duties, conspiracy and unlawful interference of trade. In the decision made by the IP Court, it ordered the first judicial assignment of copyright in Malaysia and granted one of the few springboard injunctions in Malaysia against the Defendants from being in a similar business as the client for a few years.

  • Advised on a wide range of issues with respect to the application and regulatory requirements of Malaysia's data privacy laws. Assisted with the implementation of comprehensive data privacy compliance programmes for Malaysian and multinational companies across various industries, and continues to advise on issues relating to the processing of employee and customer data, the transfer and disclosure of such data, the appointment of data processors, cross-border transfer of data, and the preparation of internal security policies.

  • Assisted in all aspects of the franchise business, leveraging on knowledge of local laws and procedures to address compliance obligations and secure swift regulatory approvals. Experienced in drafting, negotiating and terminating franchising contracts and related commercial documents such as development, master franchise and area representative agreements.

  • Represented major pharmaceutical clients in all aspects of legal, regulatory, and licensing matters, and assisted clients in navigating the full lifecycle of a pharmaceutical investment, from research and development and clinical trial related matters to product protection, importation, distribution, marketing and advertising. Regularly manages pharmaceutical companies’ IP portfolios, and is experienced in advising on technology transfers and licensing deals in major corporate transactions.

  • Assisted global internet and technology companies with respect to proposed launch of various e-commerce, e-payment and mobile services by advising on the legal and regulatory issues relating financial regulation, anti-money laundering, personal data protection, multimedia, competition, consumer protection, gaming and advertising laws.

  • Assisted clients in various aspects of fraud-related claims, including managing the internal investigations in connection with cybersecurity-related employee fraud, in filing for urgent court orders to freeze assets of rogue employees, in obtaining discovery orders to seize electronic devices, and in claims against former employees for misuse of confidential information.

  • Represented clients in various employment litigation matters, including in lawsuits or Industrial Court matters against former employees on grounds of breach of fiduciary duties, malfeasance, unfair dismissal claims, defamation, malicious falsehood and conspiracy. 

Professional Honors

  • Band 1 Individual for Intellectual Property by Chambers Asia Pacific, 2017
  • Leading Individual for Intellectual Property by Asia Pacific Legal 500, 2017
  • One of only two Malaysians ranked in Top 250 Women in IP 2017 by Managing IP
  • Recommended expert for Trademark Enforcement & Litigation and Trademark Prosecution & Strategy by World Trademark Review 1000, 2017
  • Recommended expert for Patent Prosecution and Highly Recommended expert for Patent Litigation & Transactions by IAM Patent 1000, 2017
  • Named among the Commended External Counsels of the Year, 2017 by the In-House Community
  • Market-leading lawyer for Dispute Resolution & Litigation and Intellectual Property by Asialaw Profiles, 2017
  • Best Female Lawyer in IP Litigation by Euromoney Asia Women in Business Law Awards 2014

Professional Associations and Memberships

  • ASEAN Intellectual Property Association – Member
  • Asian Domain Name Dispute Resolution Centre (ADNDRC) Domain Name Dispute Resolution Panel – Appointed Panel Arbitrator
  • Asian Patent Attorneys Association – Member
  • Bar Council Malaysia – Intellectual Property Committee – Member
  • Bar Council Malaysia – Ad-Hoc Personal Data Protection Committee – Member
  • Cambridge Commonwealth Society – Fellow
  • International Association for the Protection of Intellectual Property (AIPPI) – Malaysian Chapter – Committee Member
  • International Trademarks Association – Member
  • Kuala Lumpur Regional Centre for Arbitration's (KLRCA) Construction Industry Payment and Adjudication Act (CIPAA) 2012 – Certified Adjudicator
  • KLRCA's Malaysian Domain Name Dispute Resolution Policy (MYDRP) – Appointed Panellist
  • KLRCA's Panel of Uniform Rapid Suspension (URS) Examiners – Appointed Panellist
  • Licensing Executive Society Malaysia – Past President
  • Malaysian Intellectual Property Association – Member
  • The Malaysian Institute of Arbitrators – Member
  • World Intellectual Property Organisation (WIPO) – Appointed Panel Arbitrator and Mediator
  • World Trade Institute – Accredited IP Valuer

Admissions

  • Malaysia (1997)
  • Singapore (1988)

Education

  • University of Cambridge (LL.M. First Class Hons) (1991)
  • National University of Singapore (LL.B. Honors) (1987)

Languages

  • English
  • Malay