17 April, 2020
Since the turn of the century, if there is one field which has diabolically transformed every aspect of our lives, it will most certainly be the technology industry. From the humble iPhone to sophisticated artificial intelligence products, innovations are aplenty in every industry including healthcare, finance, defence and, of course, legal services. That said, for innovations to flourish, a framework is required to safeguard the interests of the creative minds behind each innovation. The Asian International Arbitration Centre recently had the opportunity to interview Karen Abraham1 on her journey to becoming a leading intellectual property practitioner in the region.
The excerpts of this interview are below.
What inspired you to become an intellectual property (“IP”) practitioner?
I was lucky enough to be entering the legal profession just as Malaysia was at the cusp of harmonising its IP laws with international
standards.
In the first years of my legal career, in the early 1990s, I had the opportunity to work in the Intellectual Property Department of my firm and was involved in preparing progress reports on Malaysia’s negotiations regarding the TRIPS agreement. TRIPS is an international legal agreement between member nations of the World Trade Organization (WTO) that sets minimum standards for each signatory on the regulation of various forms of intellectual property.
I was tasked with preparing speeches and presentations on TRIPS and all the research that comes with it. In doing so, I became aware of just how international the world of IP was, and how much more important it was likely to become in the near future. Unlike other practice areas, IP involves a great deal of local as well as international work, largely due to the alignment of Malaysia’s IP laws to international standards such as those imposed by TRIPS. As all signatories to TRIPS implement a similar basic legal framework that mirrors that of other jurisdictions, multinational clients enjoy seamless protection across various jurisdictions.
By the time negotiations concluded and the TRIPS agreement was signed in 1994, I found myself hooked on the fast-paced, highly-international work offered by IP practice, and I have never looked back.
How would you describe the technology, media and telecommunications (“TMT”) industry?
In comparison with other fields, the TMT industry is incredibly fast-paced. It is constantly evolving, which means practitioners and
clients alike have no opportunity to rest on their laurels. As technology develops, companies are forced to adapt to survive. The
same can be said for practitioners; we have to be prepared to advise clients on completely new situations we have never encountered before. This makes practice in the TMT industry challenging, but also exciting, as our clients often deal in state-of-the-art technology.
My TMT team assists clients with legal issues emerging from the convergence of technology, media and communications. In an increasingly digitised world, our clients are more and more concerned about, among others, issues like data privacy protection, iOT issues, the protection of AI products, digital signatures & encryption, and technology transactions.
What does your typical day as an IP/TMT practitioner look like?
My practice has always been primarily focused on IP litigation and enforcement.
Depending on what the client wants to achieve, I will carve out an IP enforcement strategy for them. Sometimes it may mean filing for speedy relief in the IP court (at the High Court) for an injunction and Anton Pillar order. In other cases, it may be to mobilise nationwide raids under the criminal remedies available under the old Trade Description Act 2011 and now under the new 2019 Trade Mark Act.
Most of the time, my typical day in the office consists of communicating with clients on calls, WhatsApp and emails and just
making sure they know we are there for them and on top of their cases. Clients want to know we are reachable and accessible. This is key in today’s world. The nature of that communication differs from day to day. On one day, I might be advising a client on the viability of an action in trademark, patent or copyright against an infringing product; on another, I might be taking a client through the options available to them to ensure their IP assets are properly protected and harnessed.
IP is an evolving subject. Each day presents itself with new, innovative and precedent making decisions that change the course
of what we once understood the position in law to be. Throughout the day, I have to make it a point to keep up-to-date with any news
relating to my field– unlike other practice areas, the IP/TMT field evolves at a rapid rate. As a practitioner, it is of utmost importance that I keep abreast of new developments so as to be able to address any concerns my client may have.
What are the most common types of disputes you come across in your line of work?
My team and I deal with a wide variety of disputes across all areas of IP. Some of the most common disputes we see arise from the
infringement and passing off of trademarks. We often enforce our clients’ rights against copycat or lookalike goods. These are often
sold in physical stores, but we are seeing an increasing number of sellers using online platforms to sell counterfeit goods. Advising and actions on recourse against online market places is almost a weekly occurrence. We also see disputes arising from license agreements, breach of confidential information, and many more.
We have always been at the forefront of patent protection and litigation and we are seeing more and more cases where clients are practicing zero tolerance against patent infringers and patent trolls.
Alternative Dispute Resolution processes are also presented to clients. We make sure all contracts we draft have a clear ADR clause as we encourage ADR and mediation options to be present in our contacts to resolve any issues in the agreements we draft.
Wherever possible, we prefer to take pre-emptive measures to nip disputes in the bud. We often send Cease and Desist letters to
infringers along with Letters of Undertaking for them to sign, so that the matter is resolved without dragging parties to Court. This way, in the event of a further violation of the IP right concerned, we have a clear case for breach of undertaking instead of what might be a complicated issue of liability.
In your opinion, what is the more preferable method for resolving IP and/or TMT disputes – litigation or alternative dispute resolution? Why?
Both litigation and ADR have their respective strengths and challenges. Neither is superior to the other; rather, they should be seen as different tools at the disposal of the parties to an IP dispute.
Deciding which tool is preferable will depend on the situation.
For example, we know from experience that where an infringer of IP rights is making good money from their infringing behavior, it is most likely that they will not cooperate with any attempt at an out-of-court resolution. In these cases, the best way to show the infringer that we are serious about enforcing our client’s IP rights is to file a suit.
On the other hand, where sensitive trade secrets and new inventions are involved, the privacy and confidentiality offered by ADR processes is of utmost importance. As arbitral proceedings are held behind closed doors and decisions are not made public, they are
much better equipped to meet the need of confidentiality than public proceedings in court.
What alternative dispute resolution mechanism do you believe is the most effective in resolving IP and/or TMT disputes? Why?
Mediation appears to be a popular option amongst the ADR options in resolving IP disputes. The International Trademark Association (INTA), which is a massive global association focusing on trademarks and other related IP rights and comprising of 7,200 organisations from 187 countries, specifically promotes mediation for IP disputes.
Unlike arbitration, mediation is a non-binding process that leaves parties free to withdraw after their initial meeting with a mediator. I
believe it is this flexibility that attracts parties to mediation.
However, arbitral proceedings provide a benefit of particular relevance in patent cases: the ability of the parties to choose arbitrators with specialist technical expertise. Although Malaysia has an IP court with specialised judges, it is possible to appoint as arbitrator an individual with first-hand knowledge and experience in the industry. This is exceptionally important in complex patent cases that require an understanding of the subject matter in order to properly make a decision.
Ultimately, as before, this is an issue of which tool is best suited for the situation at hand.
Do you consider the Asian International Arbitration Centre’s (“AIAC’s”) products and services to be well suited for the resolution of IP/TMT disputes? What do you think can be done to enhance the effectiveness of the AIAC’s products and services in this regard?
Yes, indeed. The AIAC is perfect for this. The most significant development in recent years is, of course, the AIAC’s establishment
of the Domain Name Dispute Resolution (DNDR) process, which I am proud to say I have been involved in both presiding as a panelist as well as representing parties whose domain names have been hijacked. The demand for these resolutions was, and continues to be, too large to ignore, as can be seen from the 3,693 Domain Name proceedings the WIPO center saw in 2019 alone. In 2018, the AIAC’s DNDR Panel resolved 12 domain name disputes.
Leaving aside specific procedures like DNDR, that were specifically modelled around the needs of Domain Name disputes, generally ADR should be considered from the very inception of a contract, not just as and when disputes arise. To this end, I am of the opinion that the AIAC should hold training sessions for lawyers and law firms, educating them on the when, how and why of including ADR clauses when drafting contracts. The idea is to put ADR at the forefront of dispute resolution, by providing for it in every contract this include all IP contracts including supply chain agreements.
The AIAC already provides a sample arbitration clause to be adopted into contracts; the next step forward is to approach law firms and TMT/IP institutions for a pledge of commitment that they will include these sample clauses into all contracts that they draft or enter into.
This is the easiest way to encourage ADR moving forward– it creates an entire culture where ADR is the first port of call for resolving
disputes arising from contract.
In your opinion, how effective is the legal framework in Malaysia for resolving IP/TMT disputes? Is there anything you consider
Malaysia should try adopting from its neighboring jurisdictions to enhance its legal framework?
A problem we face with ADR in Malaysia is that many see it as a mere threat, instead of a serious attempt at resolution.
Singapore has solved this problem by providing for court-based mediation. Court-based mediation is mediation that takes place in the courts after parties have commenced legal proceedings. This type of mediation is mainly carried out by the State Courts and Family Justice Courts. In fact, in civil disputes there is a “presumption of ADR”, wherein all civil cases are automatically referred to mediation or other ADR processes unless one or more party opts out. A party must have good reasons for opting out – reasons
deemed unsatisfactory by the registrar will result in cost sanctions.
All these measures serve to put all the weight and gravitas of a civil suit behind attempts at ADR. Parties are forced to take ADR seriously, because they know that litigation proceedings will follow, in which they may be subject to costs sanctions for brushing off an attempt at ADR. Implementing a similar system in Malaysia will encourage parties and practitioners to view ADR as a viable option for resolving disputes alongside litigation.
What do you perceive to be the key challenges facing the TMT industry?
The main challenge faced by the TMT industry is that of digital disruption. Simply put, digital disruption is what results from new advancements in digital technologies and the inevitable change this makes to business models. Older methods of providing goods and services begin to lose value– an example of this is the rise of the subscription business model, like that used by Netflix, completely redefining the way content is monetised by advertisers in the media and entertainment industry. Given the rapid advancement of technology, digital disruption is a concern that must be addressed in order to meet the demands of consumers.
Another issue that is at the forefront of the TMT industry is that of data privacy and protection. As digital platforms become bigger
parts of our lives, consumers growing increasingly concerned about the use of their online data. To address these concerns, TMT companies have to ensure the safety and security of their customers’ data.
In your opinion, what are the 5 key skills one needs to succeed as an IP and/or TMT practitioner?
Versatility. IP is an extremely diverse field, beyond just trademark law, copyright law, patent law and trade secret law.
An IP practitioner must be ready to advise clients on all aspects of compliance and regulatory issues on all legislation falling within the purview of the Ministry of Domestic Trade and Consumer Affairs. In each of these areas, we must be ready to advise not only on how to procure and secure ownership of IP but also on its protection, prosecution and exploitation, as well as the resolution of any disputes that may arise. Further, IP practitioners must be familiar with various aspects of the law, from drafting contracts to serving as a litigator in disputes.
Creative and Critical thinking. Given the diversity of the IP field, practitioners must also be innovative and creative in crafting solutions and novel approaches and avenues to protect a client’s work. Practitioners must actively consider how best to protect their clients’ interests having understood the business and the value of the IP asset to the business.
Communication. The most important thing for any practitioner is to instill trust in their clients. Building a relationship with a client not only makes for smoother sailing when dealing with any one matter, but also opens up a path for future engagement. I have mentioned how this is key earlier.
Attention to detail. IP and TMT practitioners must have a keen, accurate eye, particularly when drafting patents and agreements– a single word out of place could jeopardize the patent claim or change the meaning of an entire clause. Practitioners must be careful when drafting, or may end up jeopardising their client’s rights if and when a dispute arises.
Commercial awareness. IP and TMT are fields of innovation and invention. Our clients are often on the cutting edge of technology, and turn to us to advise them on how to protect their creations. It is vital for practitioners to understand the commercial reality faced by our clients so as to offer advice that best meets their needs. Understanding that intellectual property is in fact an intangible asset of the client is of utmost importance.
How would you sum up your journey in becoming a leading IP/TMT practitioner in the region?
There are many IP leaders in Malaysia and we are a great community of IP lawyers who work very closely together. I am proud to stand amongst them.
I have loved being an IP litigator and brand strategist. TMT work has been exciting and has kept me on my toes. I would have quit being a lawyer if I had chosen to specialise in anything else.
The IP community locally and abroad is an amazing network of global practitioners and we all speak the same language. The language of IP is pretty much harmonised throughout the world and we are able to share our laws and strategies seamlessly. This is the highlight of our practice as we grasp current trends and engage in global strategies.
The journey has enriched my life and I am grateful for all that I have been able to achieve as an IP practitioner, and most importantly, the IP colleagues I have met along the way.
For further information, please contact:
Karen Abraham, Partner, Shearn Delamore & Co
karen@shearndelamore.com
