Kim Poh practises exclusively in intellectual property and information technology laws. He graduated from the University of London with LL.B (Hons, Second Upper). He was admitted to the Malaysian Bar in November 2001 and thereafter commenced his career as an Advocate and Solicitor with an established large law firm in Kuala Lumpur.
He is recognised as a recommended lawyer in Intellectual Property by The Legal 500 Asia Pacific in 2014, 2015, 2018 and 2019. He is listed as a recommended expert by the World Trademark Review 2018 and 2019 (WTR 1000) (Malaysia rankings), being recognised for his prosecution and strategy work. Kim Poh is also listed as a Noted Practitioner in Intellectual Property by Chambers Asia Pacific in 2018 and as a Recognised Practitioner in 2019.
In November 2007, he left the law firm where he commenced his legal practice and joined a small boutique IP firm as a Partner. He returned to his previous law firm in October 2012 as a Partner. Prior to leaving the law firm at the end of 2015, he was the Deputy Head of the firm’s Intellectual Property & Information Technology Department.
He frequently appears before the High Court for IP cases. He has appeared before the Court of Appeal and Federal Court in several IP cases, either as lead counsel or junior counsel, including a few which culminated in landmark decisions.
He has vast experience in assisting clients in a diverse range of contentious and non-contentious IP matters, such as:
- trade marks: advisory, registration, opposition, infringement and revocation
- industrial designs: advisory, registration, infringement and revocation
- patents: advisory, registration, infringement and revocation
- copyright: advisory, voluntary notification, infringement and defending corporate clients against criminal charges
- breach of confidential information
- domain name disputes
The following are some of the cases he has handled or been involved in:
- Patent invalidation actions wherein he assisted the owner of a patent on an invention used in the oil palm industry to defend the validity of the patent against invalidation actions instituted by several different parties.
- Patent infringement and invalidation action wherein he assisted a supplier of glove manufacturing system in defending the action.
- Patent infringement and invalidation action wherein he assisted a subsidiary of a (then) public listed gloves manufacturer.
- Industrial design infringement and passing-off action wherein he assisted a renowned local flower pot manufacturer in enforcing its registered industrial design rights for a flower pot and its common law rights in the said design against a competitor which had copied the said design.
- Industrial design revocation action wherein he assisted the same flower pot manufacturer in invalidating and expunging a registered industrial design for a flower pot belonging to a competitor.
- Industrial design infringement and revocation action wherein he assisted a well-known soft drinks and beverage maker in its appeal in the action which was instituted by another multinational beverage maker in respect of the industrial design of a beverage bottle.
- Trade mark infringement, trade mark invalidation and passing-off action wherein he assisted a local conglomerate in its appeal in the action which was instituted by a former tenant of a renowned local shopping mall operated by a subsidiary of the conglomerate.
- Trade mark infringement and passing-off action wherein he assisted a renowned local stationery maker and ink manufacturer in enforcing its registered trade mark rights and common law rights in respect of a trade mark against a competitor which used a confusingly similar trade mark.
- Trade mark invalidation action wherein he assisted the same stationery maker and ink manufacturer in defending the registration of its trade mark in an invalidation action instituted by a competitor on the basis of alleged non-use of the trade mark.
- Advised a multinational company which is part of a group of multinational companies that operates a famous furniture store on various franchise issues in relation to its franchise business in Malaysia.
- Advised the developer of a famous computer game on various franchise issues regarding its plan to set up a theme park in Malaysia based on the game.
- Advised a world-renowned Spanish fashion designer and his company on various franchise issues in relation to its franchise business in Malaysia which relates to sale of men’s and women’s footwear and handbags designed by the designer best known for his signature line of high-end and exclusive women's footwear.
- Assisted a regional media monitoring and media intelligence company in defending criminal charges for alleged copyright infringement by using purported unlicensed software.
- Assisted a local company in an appeal brought by a renowned multinational company against the decision of the Registrar of Trade Marks allowing the local company’s trade mark application and dismissing the opposition filed by the multinational company.
Memberships / Directorships
- Executive Committee member of the Malaysian Intellectual Property Association (MIPA).
- Member of the International Trade Mark Association (INTA)
- Co-author of several articles published by the International Law Office (ILO) on legal updates in the area of intellectual property in Malaysia.
- Author, “Malaysian court rules on scope of protection for well-known trade marks” which was published in the Journal of Intellectual Property Law & Practice, Oxford University Press (2017, Vol. 12, No.9).
- Co-author of the following articles:
- “Intellectual Property Protection in Malaysia” (October 2004) in Maximising IP Value in Asia, a supplement to the Intellectual Asset Management magazine (iam)
- “Significant Cases of IP protection” (2006) in IP Value 2006 published by Globe White Page Ltd, publishers of Intellectual Asset Management magazine (iam)
- “Recent Developments in IP Law” (2007) in IP Value 2007 published by Globe White Page Ltd, publishers of Intellectual Asset Management magazine (iam)
- Presented “Overview of The Law On Parallel Imports In The Context of Trade Mark Infringement & Passing-Off” (2015) in a seminar organised by the Professional Development Committee of Kuala Lumpur Bar Committee.
- Contributor of a few articles to IP weblog, The IPKat.