Gooi Yang Shuh Partner

Contact
T +603 2081 3999 ext 869
E gooi.yang.shuh@skrine.com
 

Overview

Gooi is a Partner in Skrine’s Intellectual Property (IP) and Technology, Media & Telecommunications (TMT) practice. His main portfolio focuses on IP litigation and enforcement, representing local and foreign clients in a wide range of IP disputes including patents, trademarks, copyright, passing off and domain names.
 
His practice includes advising domestic and international companies on brand protection and anti-counterfeiting strategies.  This work encompasses developing online monitoring and takedown programmes on e-commerce platforms, as well as coordinating enforcement actions with the Ministry of Domestic Trade against pirates and counterfeiters.
 
Gooi has experience in the media and entertainment sector, representing clients in music licensing and film & TV production negotiations.  He also has a keen interest in IP issues relating to emerging technologies and digital platforms.
 
 
 

Key Practice Areas

  • IP Litigation and Enforcement
  • Entertainment, Gaming and Media
  • Branding, Franchising and Licensing
 

  • Acting in a copyright infringement and breach of confidential information dispute between competing software developer companies. We succeeded at the Federal Court on a novel point of law concerning whether a spent and executed Anton Piller Order may be set aside, and continue to represent the client at the High Court trial.

  • Acted in a patent infringement suit between two major multinational telecommunications companies involving Standard Essential Patents for mobile devices and novel issues relating to FRAND principles.

  • Acted for a major cargo scanning device manufacturer from the People’s Republic of China  in a multi-tiered patent invalidation and infringement dispute. We successfully obtained judgment in favour of our client in two separate suits against similar parties, including the Government of Malaysia. We have successfully resisted appeals against one of the suits up to the Federal Court, and continue to represent our client at the Federal Court in the other.

  • Acted for a local biscuit manufacturer at the Court of Appeal and Federal Court in a trademark infringement and passing off dispute.

  • Acted for a local rice manufacturer and distributor in a trademark infringement, copyright infringement and passing off suit. We successfully obtained judgment in favour of our client on all causes of action and an award of damages of RM4.2 m at the High Court and successfully upheld the judgment on appeal at the Court of Appeal.

  • Acted for a local hair and beauty products company in successfully defending and dismissing 3 related criminal prosecutions under the Trade Descriptions Act 2010.

  • Acted in a multi-jurisdiction trademark dispute for a multinational direct selling company.

  • Overseeing online enforcement programmes against the sale of counterfeit and pirated goods on e-commerce platforms and enforcement raids conducted by the Ministry of Domestic Trade and Consumer Affairs for local and international brands.

  • Assisted in the successful filings of administrative Uniform Domain Name Dispute Resolution Policy (“UDRP”) proceedings which successfully obtained the transfer of a disputed domain name for an international sports management and marketing company.

  • Acting for one of the largest local media companies in a copyright infringement action brought by a collective management organisation over a music licensing dispute.

  • Representing one of the largest local media companies in a bulk enforcement programme against various targeted infringers pirating copyrighted broadcasts and content.

  • Representing a global entertainment conglomerate in negotiations with local production companies for the production and development of local film and TV projects.

  • Represented a global entertainment conglomerate in music licensing negotiations for the launch of their SVOD service in Malaysia.

  • Conducted an IP due diligence for a local entertainment company for IP risks arising from the termination of their partnership with an international media company

  • Advised a leading local entertainment company on securing movie licensing rights from the relevant collective management organisation for the public performance of copyrighted movies at an outdoor event.

  • Acted in multiple related director and shareholder disputes at the High Court, Court of Appeal and Federal Court involving a local holding company with subsidiaries in Hong Kong, the People’s Republic of China and the British Virgin Islands.

  • Acted for a locally renowned jewellery business in resisting a civil forfeiture action linked to the 1Malaysia Development Berhad scandal. We successfully dismissed the forfeiture application instituted by the Public Prosecutor at the High Court and dismissed the Public Prosecutor’s appeal at the Court of Appeal.

  • Acted for a former politician in successfully defending and dismissing a defamation suit.

  • Acted for a global leading provider of broadband network products, services and solutions in a commercial dispute which successfully repossessed certain VSAT equipment.

  • Acted for a Malaysian-Japanese joint-venture manufacturing corporation in successfully obtaining summary judgment for non-payment of debt.

Qualifications:
  • Advocate & Solicitor, High Court of Malaya (2017)
  • Barrister-at-Law, (Lincoln’s Inn) (2016)
  • LL.B (Hons), University of Hertfordshire (2015)

Publications & Talks:
  • Interviewee, “Lessons from the “very demure, very mindful” trademark issue”, ASIA IP Magazine, September 2024
  • Author, “High Court finds AirAsia SuperApp’s Use of Third Party Names and Logos amounts to Trademark Infringement”, July 2024
  • Author, “Malaysian High Court has no jurisdiction to review UDRP domain name dispute decision by WIPO panel”, November 2023
  • Co-speaker on SkrineCast podcast,  “The Cost of Going Viral” on IP issues in social media, June 2023
  • Author, “High Court red cards restaurant bar for illegal screening of English Premier League matches”, December 2022
  • Author, “The Copyright (Amendment) Act 2022 & Related Subsidiary Legislation”, March 2022
  • Author, “Clash of the Technology Titans: Google v Oracle”, April 2021
  • Co-author, “Guardians of the (Bio-Resources) Galaxy – the Saga Continues”, February 2021
  • Author, “Infringing for the Gram: Copyright Infringement in the Era of TikTok, Instagram Story and Facebook Live”, July 2020
  • Co-author, “Fake Goods Epidemic During The COVID-19 Global Pandemic”, July 2020
  • Co-author, “Filling the Gap in Trade Marks: The Trademarks Bill 2019”, Skrine’s Legal Insights, August 2019
  • Co-author, “Guardians of the (Bio-Resource) Galaxy”, Skrine’s Legal Insights, December 2017.