Intellectual Property - Miranda & Samuel

Intellectual Property

We advise clients on a complete range of IP issues. These include registration of trademarks, patents and industrial designs in Malaysia and overseas.

We render advise on documentation for commercialization of IP assets including franchising and licensing. We are also active in all forms of IP litigation, having acted for highly contentious IP disputes in Malaysia and overseas.

We act for some of fastest growing brands in industries such as food and beverage, retail, financial services, FMCG and internet services.

We work closely with Malaysian Intellectual Property Office and public enforcement agencies.

PRACTICE AREAS

Patent, Industrial Design and Trade Mark Prosecution and Registration

We have a comprehensive trademark, patent and industrial design registration practice.

Our scope of work begins form clearance searches right up to post registration advise on use and exploitation of registered IP rights.

Our capability extends to handling portfolio work and international registration and maintenance of registrable IP rights.

Franchising and Licensing

We active in all legal aspects of franchising and licensing. Dato’ George Miranda wrote the first Malaysian book (now in its 6th reprint) on the legal and management aspects of franchising. We provide complete end-to-end solutions in franchising.

Our scope of services include drafting the Franchise Agreement, Disclosure Documents, advising on the optimum tax structure, advising on the Operating, Marketing and Training Manuals, submitting the necessary documents to the Registrar of Franchise, dealing with Registrar;s objections right up to securing the Registration of the Franchise in Malaysia.

As regards licensing, our scope of services included drafting the License Agreement and advising on the optimum tax structure.

We assist foreign franchisors in securing approvals to grant franchises in Malaysia and obtaining registration of franchises on behalf of master franchisees and individual franchisees.

Transactional IP

We have experience in advising and formulating strategies for exploitation of IP assets. The strategies could include licensing of IP rights, sale of IP assets and/or technology transfer in prescribed jurisdictions.

IP Litigation and Dispute Resolution

One of our key focus areas is litigating and enforcing rights of IP owners. The firm has been involved in numerous cases which resulted in clients successfully obtaining preliminary and permanent injunctions, summary judgments and other rulings and orders to protect rights of IP owners. The breadth of our IP Dispute Resolution Practice includes mediation and arbitration of IP rights.

Enforcement

We enjoy a close relationship with enforcement agencies by facilitating their investigation, raids and prosecution of offenders. We also conduct anti-piracy and anti-counterfeiting programs for our clients.

Franchise Litigation

In all franchise companies, there will be a small percentage of franchisees who repeated fail to comply with the Franchise Agreement and/or Franchise Manuals. Franchisors who ‘do nothing’, run the risk of these franchisees encouraging indiscipline within the franchise chain or worst, conducting, their business in a way which compromises on brand quality and consistency.

We have acted for numerous franchisors in termination and litigating against franchisees who are in breach, resulting in favorable outcomes for the franchisor. The court proceeding or arbitration usually involve seeking on order for recovery of unpaid monies, closure of outlet and return of items bearing the intellectual property of the franchisors (like signage’s, stationeries, menu’s, etc).