Biography
Kherk Ying Chew heads the Intellectual Property and Dispute Resolution Practice Groups of Wong & Partners. She has decades of experience in intellectual property (IP), commercial litigation, corporate compliance, information technology and Internet regulatory issues.
She is ranked in Band 1 for IP in Malaysia by Chambers Asia Pacific which has noted that Kherk Ying is "market-leading IP lawyer in Kuala Lumpur, drawing praise as a lawyer who ‘exhibits a remarkable capacity to effectively explain and offer comprehensive guidance for a wide range of intellectual property enquiries and issues, showcasing her expertise and communication skills in the field.’" Asia Pacific Legal 500 inducted her into its Hall of Fame since 2021 for IP and commented that she “is very knowledgeable, extremely diligent and able to lead a very capable team in contentious IP matters."
She is also recognised as a Gold Tier lawyer in enforcement and litigation by the World Trademark Review 1000, and ranked as a Gold Tier litigation and transactions professional by IAM Patent 1000.
Kherk Ying is a registered trade mark, patent and design agent in Malaysia and the principal author of the Wolters Kluwer 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
Kherk Ying 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.
She 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 covers the drafting of various pleadings for court proceedings, which includes summary judgments, 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 the courts — 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, Kherk Ying continues to advise multinational corporations on developing internal policies, procedures, and code of conducts. 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
- Assisted numerous clients comprising of public listed companies, family-owned conglomerates, medium enterprises and multinational companies operating in Malaysia to conduct risk assessments and implementation of anti-bribery systems in compliance with Section 17A of the Malaysian Anti-Corruption Commission Act 2009. These clients stem from a wide range of industries including oil and gas, telecommunications, construction, gaming, investment holdings, manufacturing as well as fast moving consumer goods.
- Successfully defended one of the world’s largest oil and gas companies against a patent infringement claim involving the design of a mobile offshore production unit for oil exploration and extraction. This is a landmark patent litigation matter as it covered complex issues which had to be determined for the first time in Malaysia and due to the size of the claim and the profile of the client.
- 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 participating in a similar business as the client for a few years.
- Acted for a global real estate services company on a matter involving the client’s ex-licensee in Malaysia in relation to a dispute over the client’s global brand in Malaysia. Other than the matter’s complex nature involving the consolidation of a passing off suit and a trademark expungement action, this is the first time Malaysian Courts have had to deal with the issue of nexus in an IP case.
- 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 its 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 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.
- 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.
- 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 the proposed launch of various e-commerce, e-payment and mobile services by advising on the legal and regulatory issues relating to 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.
Professional Honors
- Band 1 in Intellectual Property, Chambers Asia Pacific, 2011 - 2024
- Listed in the Hall of Fame (2021 - 2024) and ranked Leading Individual (2013 - 2020) for Intellectual Property by Legal 500 Asia Pacific
- Leading Individual for Technology, Media and Telecommunications by Legal 500 Asia Pacific 2024
- Ranked “Top 100 Women in Litigation” by Benchmark Asia Pacific 2020 - 2023
- Ranked A-List “Top 100 Lawyers in Malaysia” by Asia Law 2023
- Ranked Gold Band by IAM Patent 1000, 2013 - 2023
- Ranked Gold Band in Enforcement and Litigation by World Trademark Review, 2019 - 2023
- Ranked as an Elite Practitioner for Intellectual Property by Asialaw Profiles, 2022
- Named among Asia IP Experts 2022
- Named among ‘Top 250 Women in IP’, Managing IP 2017 - 2020
- Won "Woman Lawyer of the Year" by Asian Legal Business Malaysia Law Awards, 2019
- Won "Woman Lawyer of the Year" by Asian Legal Business Southeast Asia Law Awards, 2019
- Named Acritas Star in Dispute Resolution, 2018
- Named among the ‘Commended External Counsels of the Year 2017’ by the In-House Community, 2017
- Named ‘Best in IP Litigation’ by Euromoney Asia Women in Business Law Awards, 2014 and 2017
- Market-leading Lawyer in Dispute Resolution & Litigation, Asialaw Profiles, 2017 - 2018
- Leading Lawyer in Dispute Resolution & Litigation, Asialaw Profiles, 2016
- Market-leading Lawyer in Intellectual Property, Asialaw Profiles, 2017 - 2018
- Leading Lawyer in Intellectual Property, Asialaw Profiles, 2008 - 2016
- Trademark Star, Managing IP’s IP Stars, 2016 - 2017
- Leading Individual in IP: Enforcement & Litigation, World Trademark Review 1000, 2016 - 2018
- Recommended Individual in IP: Prosecution and Strategy, World Trademark Review 1000, 2016 - 2018
- Highly Recommended Individual in IP: Litigation & Transactions, IAM Patent 1000, 2013 - 2018
- Law Society of Singapore Book Prize Recipient
- Leow Chia Heng Prize – for outstanding academic performance
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