Overview  

Khoo Guan Huat chairs the Intellectual Property Dispute Resolution Practice Group in Skrine. He regularly appears as counsel in courts at all levels and in arbitration proceedings. He also sits as Arbitrator in a number of matters.

His work in intellectual property and life sciences includes those for multinationals involved in, among others, the pharmaceutical, tobacco, medical supplies and devices, telecommunications, and semiconductor industries.

He has also appeared as an expert witness on Malaysian law in various proceedings in the United States and in Singapore.

He was part of the working group that was involved in revising the arbitration rules of the United Nations Commission on International Trade Law (UNCITRAL), with sittings in New York and Vienna, resulting in the revised UNCITRAL Rules being published in 2010. In 2008, he appeared as one of the counsel in the hearings conducted by a Royal Commission of Inquiry that was set up by the Malaysian government.

  Further Details  

Areas of Practice

Biotechnology, Patent Disputes, Copyright Disputes, Designs Disputes, Information Technology, Media, Trademarks Advisory, Trade Descriptions, Trade Disputes, Trade Secrets/ Confidential Information, Telecommunications.

Professional Affiliations

• Accredited Arbitrator, Kuala Lumpur Regional Centre for Arbitration

• Panelist, Domain Name Dispute Resolution, Kuala Lumpur Regional Centre for Arbitrationn

• Adjunct Lecturer, Faculty of Law, University of Malaya in the Certificate in Legal Practice course, 1990 to 2004

• Adjunct Lecturer, the Law of International Trade in the LLM program in the University of Malaya in 1990

• Member, International Association for the Protection of Intellectual Property (AIPPI)

• Member, International Trademark Association (INTA)

• Foreign Member, American Intellectual Property Law Association (AIPLA)

• Member, Fédération Internationale des Conseils en Propriété Industrielle (International Federation of Industrial Property Attorneys) (FICPI)

• Member, Advocates and Solicitors' Disciplinary Committee

Qualifications

Advocate & Solicitor, High Court of Malaya
LLB (Hons) Malaya

  Experience  

• Represented a global international applications software provider against a defendant for copyright infringement;

• Represented a global pharmaceutical innovator company against a generics producer of a pharmaceutical product in claim involving infringement of a process patent;

• Represented a global medical devices manufacturer against a Japanese company in a patent infringement claim;

• Represented a China based home appliance manufacturer accused of patent infringement, and obtained an Appellate Court decision reversing a lower Court's finding of infringement;

• Represented a trademark owner whose registration was challenged in the Federal Court and obtained an order dismissing the challenge in a matter involving issues regarding whether a non-invented word having no direct reference to the character and quality of the goods was registrable as a trademark. Also obtained substantial damages for the trademark owner upon a finding of infringement;

• Represented a major multinational defence equipment manufacturer and obtained an order dismissing a challenge against its trademark registration mounted by a competitor;

• Represented a number of UK registered Design holders in a class action and obtained a declaration in respect of the extension of the validity of their registered designs for a 25 year period;

• Represented a major telecommunications company and obtained judgment for substantial damages against a corporate entity for copyright infringement and against its directors for being liable for joint infringement;

• Acted in a number of cases in Court involving arbitration matters where the validity and/or existence of arbitration agreements and tribunal's jurisdiction were challenged;

• Represented a major Indian petrochemical company and defended a challenge against an arbitral tribunal award mounted by the Government of India.

  Publications  

Authored/Co-authored the following articles/chapters:

• Preparatory Course for Expert Witnesses in Land References, December 1990 and October 1991, at INSPEN (Institut Penilaian Negara).


• Presented “Appreciation of Banking and Commercial Laws”, February 1991 at Pusat Latihan Kakitangan, Bank Negara Malaysia.


• Presented “Arbitration in Construction Contracts (the Role of Technical Professionals)”, February 1992 at Institut Kerja Raya Malaysia.


• Presented “Damages and Commentary on Civil Law (Amendment) Act 1984” at the Annual Senior Federal Counsel/Federal Counsel Conference in 1992.


• Presented "Construction Law" organised by the InterPacific Bar Association and the Bar Council in November 1993.


• Conference on "Insurance Law" organised by LAWASIA and the Bar Council in March 1995.


• “Arbitration Proceedings” – proceedings in the seminar of Arbitration in Construction Contracts (the Role of Technical Professionals), February, 1992, Institut Kerja Raya Malaysia.


• Co-author of “Banking and Negotiable Instruments”, Survey of Malaysian Law 1989 (Malayan Law Journal, 1991).


• Co-author of “The Banking and Financial Institutions Act 1989 and the Offshore Banking Act 1990” – Developments in Malaysian Law (Pelanduk Publications).


• “Arbitration” – Survey of Malaysian Law 1991 (Malayan Law Journal).


• “Arbitration” – Survey of Malaysian Law 1992 (Malayan Law Journal).


• “Arbitration” – Survey of Malaysian Law 1993 (Malayan Law Journal).


• “Arbitration” – Survey of Malaysian Law 1994 (University of Malaya).


• “Assessment of Damages in Fatal Accident Claims and a Commentary on the Civil Law (Amendment) Act 1984” [1993] 1 MLJ cxxix.


• Co-author of “The Finality of Final Certificates” [1994] 2 MLJ xc.


• “Construction Insurance” [1995] 2 MLJ cix.


• Co-author of “Arbitration”, Part III in the Malaysian Court Forms (Malayan Law Journal).


• “The Law of Business Organizations and Securities Transactions” – March 1997, proceedings in the Asean Business Law Program, Quezon City, the Philippines.


• “A Practical Approach – The Perils and Pitfalls in Construction Contracts” presented on the 23rd of August 2002 at Hilton Hotel, Kuching for a seminar organized by Sterling-Hill Associates Sdn Bhd and the Institute of Engineers Malaysia.


• Presented “Arbitrability of Intellectual Property Disputes” on 11 July 2003, organised by the Bar Council and the Chartered Institute of Arbitrators.


• “The Scope of Mediation on Intellectual Property Disputes” – proceedings jointly organised by the Malaysian Bar Council and the International Trademark Association, August 2004


• “Managing Breach of Contract” – proceedings organized by Lexis-Nexis in the Corporate Counsel Conference, November 2005


• "The Arbitration Act 2005" on March 13, 2006, proceedings jointly organised by the Kuala Lumpur Regional Centre for Arbitration, the Bar Council and the Society of Construction Law