Charmayne heads both the Intellectual Property (IP) practice and the Technology, Media and Telecommunications (TMT) practice. As a leading figure in IP and TMT legal advisory and compliance, Charmayne has extensive experience in both spaces and has worked with regulators, public institutions and companies of all sizes in shaping the future of IP and TMT.
Charmayne’s expertise includes managing the registration of and general advisory and drafting work relating to the classic forms of IP rights (trade mark, copyright, industrial design rights and patents). She also regularly deals with regulators and advises clients who provide technology and telecommunications services such as satellite, internet and on-demand content services on complex and novel regulatory compliance and licensing matters.
She is also the Malaysian member of the Global Leaders Forum (TMT practice) and a member of the Federation of Malaysian Manufacturers (FMM) (for IP and TMT).
Key Practice Areas
- Technology, Media and Telecommunications
- Intellectual Property
- Advised a leading multinational technology company on licensing requirements and compliance with telecommunications laws and other relevant laws in respect of hosting a data centre in Malaysia. The advice included a broad range of issues including procurement, leasing and installation of fibre optic cables, data protection/privacy issues and rights of access by enforcement bodies and governmental bodies.
- Advised one of the world’s largest multinational technology companies specialising in internet related services and products and the use of drones, i.e. unmanned aerial vehicles (UAVs).
- Advised one of Malaysia’s first subscription based music, podcast and Video-on-Demand (VOD) operators in respect of its entry into the Malaysian market, including on issues pertaining to telecommunications licensing and content regulation.
- Advised various companies on issues relating to the installation and use of SIMs/chips in vehicles and other IoT devices.
- Advised one of the world’s largest internet-based companies specialising in technology-related communications market on doing business in Malaysia and the regulation of its mobile phone chat and value-added services; this included assisting them to obtain the relevant licenses from the Malaysian Communications and Multimedia Commission (MCMC) for provision of VoIP services.
- Assisted a party involved in the Digital Terrestrial Television (DTT) project for the implementation of digital terrestrial television services in Malaysia, an initiative of the MCMC.
- Advising on the use of cutting edge technology devices in Malaysia, including licensing requirements, certification rules and procedures, privacy, consumer protection, telecommunications laws and user terms and conditions.
- Advising an international start-up that provides streaming media on doing business in Malaysia and compliance with Malaysian laws.
- Advised on and drafted a wide variety of commercial contracts used in the IT industry (e.g. outsourcing, licensing, development, systems integration, distribution, service levels and end user licence agreements).
- Advising an international commercial music streaming service provider on the legal and regulatory issues in Malaysia governing such service.
- Advised on the supply of security operations centre (SOC) services by a company specialising in managed cybersecurity services and securing the integrity of IT assets; and prepared template agreements for the Client’s business.
- Acted for a leading foreign IT service provider for an IT outsourcing project that involved the provision of IT products (including hardware and software) and services to the IT subsidiary of an established local bank. The scope of work included the review, drafting and negotiations of the IT outsourcing agreement and other IT-related agreements.
- Acted for an Indonesian bank in reviewing, drafting, advising and conducting negotiations in relation to a system licence and services agreement with a Labuan incorporated IT service provider. This complex transaction involved the (a) outsourcing of the bank’s data centre, disaster recovery facility and management services; (b) licence and implementation of a new system to process the bank’s daily banking transactions; and (c) provision of maintenance services of the licensed system in Indonesia.
- Acted for a prominent Islamic insurance operator in Malaysia in reviewing, drafting and advising in relation to an IT infrastructure operations management services agreement with a leading IT service provider. This transaction involved the outsourcing of the management of the insurance operator’s IT systems.
- Advised various companies on the regulatory framework on online gaming and contest promotion.
- Advised on the laws and regulations concerning the supply of telecommunications facilities and the operation, maintenance and commercialisation thereof; preparation of the related agreements.
- Acts as the agent and manages the trademark portfolio for clients across various industries. Notably, these industries include technology and new media, manufacturing, food and beverage, manufacturing, etc.
- Acts as the agent and manages the patent portfolio for clients across various industries. Notably, these industries include pharmaceutical, oil & gas, food & beverage, etc.
- Acts as a domain name mediator for domain name registration disputes.
- Provides general advisory work relating to the classic forms of IP rights: trade mark, copyright, industrial design rights and patents. Her experience involves advising on and drafting of IP-related contracts (e.g. licensing, distributorships and technology transfers).
- Regularly advises on labelling and advertising claims covering various industries e.g. food & beverage, cosmetics, electrical and telecommunications products and product recall.
- Advised one of Malaysia’s first subscription based music, podcast and video-on-Demand (VOD) operators in respect of its entry into the Malaysian market, including on issues pertaining to copyright licensing, content requirements and consumer protection; drafting and reviewing their various policies and terms and conditions.
- Advised a leading international subscription video-on-demand service provider on copyright, production and licensing of musical works; and compensation of music composers.
- Advised various companies including internet access service providers, domain name registrars and web-hosting companies on content requirements and take-down provisions under Malaysian laws vis-à-vis copyright infringing and unlawful content.
- Trade Mark Agent
- Design Agent
- Patent Agent
- Advocate and Solicitor, High Court of Malaya (1987)
- Certificate of Legal Practice, Malaysia (1986)
- LL.B (Hons) University College London (1985)
- Member, Center for international Legal Studies (CILS) Associate Professional
- Member, Congress of the CILS Fellows
- Member, Malaysian Intellectual Property Association
- Member, Licensing Executives Society Malaysia
- Member, International Trademark Association (INTA)
- Member, Asian Patent Attorneys Association
- Member, The Association of European Trade Mark Owners (MARQUES)
- Malaysian member, Global Leaders Forum (TMT practice)
- Member, Federation of Malaysian Manufacturers (FMM) (for IP and TMT)
Authored/Co-authored the following articles/chapters:
- Co-author (with Adriani Wahjanto), The Malaysian contribution - “A Global Guide for Practitioners on World Trademark Law Report Yearbook 2005”, Globe Business Publishing Ltd., 2005.
- Author, “Intellectual Property Rights in Malaysia”, International IP Law Firms 2005, HurryMedia Co Ltd., China, 2005.
- Co-author (with Chew Yu Shen), Malaysian chapter - “World Intellectual Property Rights & Remedies”, Oceana Publications, 2000 - 2005,
- Co-author (with Jeannette Tan Li Shyan), “IP law in Malaysia”, Member Directory for Lex Mundi’s IP World Desk Reference, 2004.
- Co-author (with Lim Yen Hui and Chew Yu Shen), The Malaysian chapter - “The Preston Gates Guide to Telecommunications in Asia”, Asia Law & Practice, 2004,
- Co-author (with Kuek Pei Yee), The Malaysian chapter - “Building and Enforcing Intellectual Property Value: An International Guide for The Boardroom 2003”, Globe White Page, 2003.
- Co-author (with Lim Yen Hui), Malaysian chapter - “The Preston Gates Guide to Telecommunications in Asia”, Asia Law & Practice, 2003.
- Co-author (with Lim Yen Hui), “Legislative Changes Signify Further Improvement for IP”, Managing Intellectual Property: Asia-Pacific IP Focus, 2003.
- Co-author (with Lim Yen Hui), “Product Recall in Malaysia”, Product Liability, Advertising, Unfair Competition and Consumer Affairs, Volume 8 No.2, 2000,. (This is a Newsletter of the Committee S (Products Liability, Advertising, Unfair Competition and Consumer Affairs) of the International Bar Association Section on Business Law).
- Co-author (with Lim Yen Hui), “Product Recall in Malaysia”, Australian journal entitled “Australian Product Liability Reporter, Volume 11 No.7”, 2000.
- Co-author (with Chew Yu Shen and Kuek Pei Yee), “E-commerce and Telecommunications in Malaysia”, The New Project Finance for Asia, Euromoney Publication, 2000.
- Co-author (with Lim Yen Hui), “Product Liability in Malaysia”, Australian publication entitled “Product Liability in the Asia Pacific, Second Edition”, 1999.
Delivered the following presentations:
- Presenter, “Technology Transfer – Making the Most of Your IP”, organised by LexisNexis and Malayan Law Journal (MLJ), Park Royal Hotel, Kuala Lumpur, November 2008.
- Presenter, “Key Principles in Drafting IT Contracts”, LexisNexis and Malayan Law Journal (MLJ) Seminar, June 2005.
- Presenter, “Agreements for the Different Commercialisation Routes: Protection Clauses in Agreements”, Institut Tadbiran Awam Negara (INTAN), March 1997.
- Presenter, “Asean and the Challenge of Globalisation: Towards Enhancing Justice, Stability and Harmony”, 10th Asean Law Students Conference, , International Islamic University Malaysia, August 1998.
- Listed in Asia Business Law Journal 2019 as one of 'Malaysia Top 100 Lawyers - The A List'
- Ranked as a "Leading Individual" for Intellectual Property in Legal 500 Asia Pacific 2019.
- Ranked in Band 2 for Intellectual Property in Chambers Asia-Pacific 2019.
- "Charmayne Ong heads the department and is commended for her IP advisory work, including corporate and transactional-related matters and managing trade mark portfolios. She is also active on patent prosecution and is praised by an interviewee for her"dedication and professionalism in communicating with clients and providing advice." - Chambers Asia-Pacific 2019
- Ranked in Band 2 for TMT in Chambers Asia-Pacific 2019.
- "Charmayne Ong leads the firm's TMT practice and is well versed in data privacy, e-commerce, telecoms and IT regulations. In the context of international mandates, interviewees characterise her as "quite calm, which is helpful when co-ordinating multi-jurisdictional projects." - Chambers Asia-Pacific 2019
- Listed as a "Leading Individual" for Intellectual Property in Legal 500 Asia-Pacific 2018 - 2019.
- Listed as a "Leading Individual" for TMT in Legal 500 Asia-Pacific 2018 - 2019.
- Named as a "Leading Lawyer" for IP by asialaw Profiles since 2009.
- Listed as a "Leading Individual" for IT and Telecommunications by Legal 500 Asia Pacific since 2008.
- Ranked for IP in Chambers Asia-Pacific since 2009.
- Listed as an expert by Who's Who Legal for Data: Information Technology, Data: Telecoms & Media, and Patents.
- Recognised as an IP Star by Managing IP’s for 2016 and 2017.
- “Charmayne Ong is respected in the market for her non-contentious IP expertise. Her broad practice encompasses trade mark registration and advisory work on patents, data privacy and copyright issues.” - Chambers Asia-Pacific
- “Respected in the market for her non-contentious IP expertise” - Chambers Asia-Pacific