Shearn Delamore & Co

Intellectual Property

Partner since 2013

Michelle is a Partner in the IP Department of Shearn Delamore. Michelle represents clients in all areas of IP litigation namely, trademark, copyright, design, passing-off, geographical indication, trade secrets as well as complex patent cases involving pharmaceutical/life sciences, medical devices, oil palm and gloves, amongst others.  She is often involved in precedent-setting cases in the Federal Court.  She also advises and defends clients in prosecution matters involving amongst others, Control of Drugs and Cosmetic Regulations 1984.  Her experience in IP litigation gives her added insight and context when it comes to advising her clients on other IP areas including trademark prosecution, advisories/agreements, and enforcement.

Vis-à-vis advisories/agreements, her experience includes not only IP-related agreements but also e-commerce and IT/software agreements.  Michelle also advises on domain name disputes, franchising (compliance), gaming and food regulations and personal data protection.  She has been invited to speak on personal data protection on numerous occasions including conducting refresher courses on this topic.

Michelle was a STAR scholar with a Second Class Upper Honours in law from the Uni of London in 2002.  She was one of the top students in the Certificate in Legal Practice with a Second Upper in 2003.  She was called to the Bar of the High Court of Malaya in August 2004.

Michelle is the immediate Past President of the Licensing Executives Society of Malaysia.  She is also a trainer in the Advocacy Training Course organized by the Bar Council.  In addition, she is actively involved in the IP Committee of the Bar Council.

Michelle Loi is The Legal 500 Asia-Pacific’s recommended lawyer for 2014, 2017, 2018 and 2019 and is also named by Asia IP (2015) as one of the 50’s Asia-Pacific’s “Licensing Lawyers You Should Know”.  Recently, she was accorded Silver Tier by the World Trademark Review in enforcement and litigation. Michelle is a regular contributor for the Malaysian Chapter for Katzarov’s Manual on Industrial Property. She also co-authored the Malaysian Chapter of Franchising in Asia published by Lex Foundation (2015) and has been consistently requested to provide updates for franchise in Malaysia.

English, Malay

• Immediate Past President, Licensing Executives Society of Malaysia• Member, Intellectual Property Committee of the Bar Council Malaysia• Trainer, Advocacy Training Course, Bar Council, Malaysia• Member, Competition Committee of the International Chamber of Commerce (ICC) Malaysia• Member, Bar Council Malaysia

LL.B (Hons), University of London (External, 2002) Certificate in Legal Practice (2003) Advocate & Solicitor, High Court of Malaya

Publications:

• For the past at least 5 years, Michelle is a regular contributor for the Malaysian Chapter for Katzarov’s Manual on Industrial Property.https://www.katzarov-manual.com/ (Upon subscription)

• The Rise of Merck and the Fall of SKB Shutters (Oct 2019)https://www.shearndelamore.com/whatnews/the-rise-of-merck-and-the-fall-of-skb-shutters/This article chronicles the challenges faced by patentees following the decision in SKB Shutters and the important decision handed down by the apex Court in the MSD case that expressly overruled SKB Shutters insofar as the state of a dependent patent claim is concerned. 

• Malaysia: Merck finally shuts the door of SKB Shutters (Oct 2019)https://www.ipstars.com/NewsAndAnalysis/Merck-finally-shuts-the-door-of-SKB-Shutters/Index/4418This article touched on the very important (if not, most important) patent decision in Malaysia handed down by the Federal Court in the MSD case last year, of which the co-author represented MSD.

• Copyright Issues Arising from Photos of Architecture (Mar 2019)https://www.managingip.com/Article/3865422/Malaysia-Copyright-issues-arising-from-photos-of-architecture.html?ArticleId=3865422

• MALAYSIA: Court Rules on Sections of TMA and Goodwill Across Borders (Sept 2018)https://www.managingip.com/article/b1kbprvxp8qr5m/malaysia-court-rules-on-sections-of-tma-and-goodwill-across-borders?ArticleId=3831228

• Malaysia -Market Surveys After Liwayway (Nov 2017)http://www.conventuslaw.com/report/malaysia-market-surveys-after-liwayway/The preference for market surveys – what are the disadvantages? What gives? This article explores the Federal Court decision on the requisites to follow and the no-no’s of a market survey.

• Michelle co-authored the Malaysian Chapter of Franchising in Asia published by Lex Foundation (2015)Loi, M. (2015). Malaysia. In T. H. Kendal, Franchising in Asia 2015: Legal and Business Considerations (pp. 170-184). USA: LexNoir Foundation.

• Franchising in Malaysia (Franchising in Asia, Legal & Business Considerations) (Oct 2013)https://www.nixonpeabody.com/-/media/Files/Alerts/165117_Franchise_Alert_30OCT2013.ashx

• Malaysia Resists International Influencehttps://patentlawyermagazine.com/malaysia-resists-international-influence/