Michael Soo

Practice Areas

Intellectual Property, Information Technology & Licensing

Career

Michael Soo is a Barrister at Law, Gray’s Inn, England and Wales; an advocate and solicitor of High Court of Malaya and the Supreme Court of Singapore. He is the current Managing Partner of Shook Lin & Bok. He joined the firm in 1993 as a partner and is the head of the IP and IT Department. Michael was a past president of the Malaysia Intellectual Property Association (“MIPA”), and was the immediate past president of Asian Patent Attorneys Association, Malaysia Country Group, and is currently a vice president (International) and a councilor of Asian Patent Attorneys Association (“APAA”). He was a member of the Copyright Law Review Ad-hoc Committee, under the Attorney General’s Chambers, Malaysia, and is a member of the IP Committee of the Bar Council of Malaysia since it was established in 2002.

Professional Memberships

* Member and President of Malaysia Country Group, Asian Patent Attorneys Association (APAA)

* Member and past president, Malaysian Intellectual Property Association

* Member, Bar Council Intellectual Property Committee

* Member, International Trade Mark Association (INTA)

* Member of INTA’s International Panel of Neutrals (an Alternative Dispute Resolution [ADR]

* Overseas Member, The Institute of Trade Mark Attorneys, United Kingdom

* Member, Inter-Pacific Bar Association (IPBA)

* Member, LawAsia (Law Association of Asian Countries)

* Member, International Association for the Protection on Intellectual Property (AIPPI)

* Panellist, Asian Domain Name Dispute Resolution Centre

* Member, ASEAN Intellectual Property Association

* Member, Licensing Executives Society

Work Highlights

1. Representing Sims Capital Sdn Bhd in an action for the expungement of its registered mark which was instituted by Inner Mongolia Mengniu Dairy (Group) Company Limited.

2. Representing Public Bank Berhad in defending against an application by TransferWise Ltd for the partial expungement / variation of the specification of services of its service mark which is registered in respect of services in Class 36, and for Public Bank Berhad’s registration be limited to only certain services in Class 36.

3. Representing Sika AG and 2 others, a world leading producer and seller of chemical products used in the construction industry, in an action against Nippon Paint Malaysia Sdn Bhd for trademark infringement and passing-off of the Plaintiffs’ trademarks and get-ups, as well as for the infringement of copyright in the product descriptions and product data sheet of the Plaintiffs’ products and unlawful interference with the Plaintiffs’ trade.

4. Represented Mewah Dairies Sdn Bhd, the Defendant, in a passing off action commenced by Bega Cheese Limited, the Plaintiff.

5. Represented HB Asam Jawa Enterprise Sdn. Bhd. and 2 others (Plaintiffs) in an action against Fang Hun Boon (Defendant) for breach of an oral agreement involving the assignment of a trademark registration.

Expert in these Jurisdictions

Malaysia

Languages Spoken

English, Malay, Mandarin, Cantonese

Publications

Contributed to the Law and Practice of Injunctions in Malaysia, Sweet & Maxwell

Awards

Experience

Michael Soo has practised exclusively in all areas of IP law, with emphasis on enforcement and civil litigation, for over 35 years. He has appeared as lead counsel or co-counsel in a number of infringement and/or passing-off actions before the High Court, Court of Appeal and Federal Court (formerly known as Supreme Court). In addition to advisory and litigation work in all areas of intellectual property law, he has initiated, conducted and concluded settlement negotiations involving intellectual property rights leading to amicable resolution of disputes before litigation as well as cases pending before the courts. He has on many occasions been asked by potential litigants or their legal counsel in cases where he was not representing either party to give a non-binding opinions, as an informal guideline or basis for settlement negotiations

Michael Soo is a panelist of domain name dispute resolution administered by Asian International Arbitration Centre in Kuala Lumpur and a Domain Name Dispute Panelist of HKIAC and had adjudicated on a number of domain name dispute cases. He is active in several international professional organisations including International Trademark Association (“INTA”), APAA and Inter-Pacific Bar Association. He was the chair of INTA Asia Pacific sub-committee of geographical indications for more than once.

Michael has presented papers on intellectual property law in seminars and conferences organised by the Bar Council of Malaysia, and at several international, regional and local conferences including the 12th Commonwealth Law Association Conference and several seminars and conferences organised by World Intellectual Property Organization (“WIPO”). He lectured on copyright and design law for the Patent Agent Examination since its inception in 1997, and on intellectual property law at the Institute of Judicial and Legal Training (ILKAP), of the Prime Minister’s Department, Malaysia. Michael also regularly contributes articles and updates on IP in leading magazines.