Karen Abraham

Practice Areas

Intellectual Property

Japan Desk

Personal Data Protection & Privacy Laws

Technology, Media & Telco

India Desk

Career

Karen has more than 30 years of litigation experience in IP, appearing in the Apex Courts in Malaysia. The Malaysian law journals bear testimony of how she has been instrumental in setting precedent in IP jurisprudence and legal reform thereby establishing and evolving IP infrastructure in Malaysia over 3 decades. Abraham presides as panel member of the domain name disputes and sits on the disciplinary board and IP committee of the Malaysian Bar Council. Abraham is experienced in IT, e-commerce, telecommunications related matters and cyber laws. Abraham works very closely with government authorities safeguarding IP rights for brand owners by carrying out anti-piracy and anti-counterfeiting enforcement programmes regularly throughout the country. Abraham was the first Malaysian to sit on the Bureau of AIPPI as the Assistant Secretary General. She is the first woman in Malaysia to hold a position as Board Member of INTA. She also sits on the Council of Asean IPA and is an active Anti Counterfieting committee member of both INTA and MARQUES .

•Chambers Asia-Pacific (2020 -2023) “Band 1” lawyer in Intellectual Property in Malaysia

Professional Memberships

• Member of the Far East Committee, American Intellectual Property Law Association (AIPLA)

• Member, Global Intellectual Property Alliance (GLIPA)

• Member, International Trademark Association (INTA)

• Member of the Anti-Counterfeiting and Parallel Trade Team, MARQUES

• Member of the IP Committee, Malaysian Bar Council

• Member of the Mediation Committee, Malaysian Bar Council

• Member, Inter-Pacific Bar Association (IPBA)

• Member, International Chamber of Commerce (ICC)

• Member, Malaysian International Property Association (MIPA)

• Member, Malaysian International Mediation Centre (MIMC)

• Member, Licensing Society of Malaysia (LES)

• Member, LAWASIA, the Malaysian Invention and Design Society (MINDS)

Publications

• Trademark Litigation Handbook – Thomson Reuters, 2022, 2017 and 2013 [co-author]

• Law Business Research Ltd: The Intellectual Property Review, Tenth Edition, 2021

• Brexit and Your Marks in the UK: A Brief Report, 2021

• Lexology – Arbitrating Intellectual Property Disputes: Lessons from Hong Kong and Singapore, 2020

• Industrial Design Rights: An International Perspective (3rd Edition) – Wolters Kluwer, 2020

• AIPPI Law Series: Genuine Use of Trademarks – Wolters Kluwer, 2020, 2018 [co-author]

• Chambers Global Practice Guide 2019 Malaysia Pharmaceutical Advertising: Q&A [co-author]

• International Comparative Legal Guide to: Trade Marks 2019 – Global Legal Group, 2019 [co-author]

• International Comparative Legal Guide to: Trade Marks 2018 – Global Legal Group, 2018 [co-author]

• Sweet & Maxwell: Domain Name Dispute Resolution, 2018 [co-author]

• Managing IP: Monetising IP assets – Malaysia, 2018

• Managing IP: ASEAN Proposes Pan-ASEAN Trademark System, 2018 [co-author]

• Managing IP: Asia-Pacific IP Focus, 2018 [co-author]

• INTA ASEAN: IP and the latest developments, 2017

• Asia IP: GIs and the Road Ahead, 2017

• International Patent Litigation: Malaysia Chapter – Bloomberg BBNA, 2017 [co-author]

• Trademark Litigation Handbook – Thomson Reuters, 2022, 2017 and 2013 [co-author]

• World Trademark Review: Anti-Counterfeiting Guide, 2017, 2016, 2015, 2014, 2013, 2012, 2011 and 2010

• Arbitration in Malaysia: A Practical Guide – KLRCA, 2016

• World IP Review – Newton Media Limited, 2016, 2015, 2014, 2013 and 2012 [co-author]

• Managing IP: APAC IP Focus, 2015

• Center for International Legal Studies: World Intellectual Property Rights and Remedies, 2015

• Thomson Reuters: Copyright Litigation, 2015 and 2010

• The European Lawyer Reference: Copyright Litigation, 2015 and 2010

• The European Lawyer Reference: Trademark Litigation, 2013

• Acquisition International: Intellectual Property through M&A, 2012

• Managing IP: Managing IP in the Credit Crunch, 2009

• Managing IP: Top of the to-do List, 2008

• Asian Counsel: Employment Special Report, 2007

• Asian Counsel: Changing the laws by which we work, 2007

• Managing IP: Zero tolerance for infringement, 2007

• AIPPI Newsletter: Landlord liability in Intellectual Property, 2006

• Managing IP: Malaysia’s IP Shopping List, 2006

• Managing IP: Brand Management Focus, 2005

• Managing IP: Legislative changes boost IP enforcement, 2004

• Asian IP: Price fixing – The next frontier in combating piracy, 2003

Languages Spoken

English, Malay

Experience

Litigation

Karen has handled many high-profile matters including representing multinational conglomerates to Malaysian made corporations. Karen has made her mark in the Malaysia Courts by being involved and contributing to landmark decisions made by the Courts of Malaysia. The following are instances of the same:-

• Established a novel point of law in Mead Johnson Nutrition (Malaysia) Sdn Bhd v Public Prosecutor [2020] MLJU 1091

Successfully acted for the multinational infant milk powder manufacturer, Mead Johnson Nutrition, who is the Defendant in this state action. Two summons were issued against the Defendant. However, the first charge was never read to the Defendant while the second charge which carries a different punishment was filed and read to the Defendant after the limitation period prescribed time in section 19(2) of the Food Act 1983. The crux of this issue was the validity of the second charge – i.e. if it was an amended charge or a new charge.

A striking out application to strike out the Prosecution’s case on the basis that it was instituted beyond the prescribed time period. The strike out application was dismissed by the Magistrates’ Court on. On behalf of the Defendant, we appealed against the decision of the Magistrates’ Court to the High Court.

At the High Court, amongst others, one of the questions posed to the High Court was whether the failure of the prosecutor to read the original charge to the accused within the time limit implies that the original charge was not activated in law. The High Court decided in favour of the Defendant and reversed the Magistrates’ Court’s decision to dismiss our striking out application.

• Represented subsidiary of British American Tobacco (Malaysia) Berhad in an invalidation proceeding

Acted as counsel for a subsidiary of the leading tobacco company in Malaysia for an invalidation/cancellation proceeding for non-use of a trademark. A novel argument that conducting research and development constitute use of a trademark was raised. The Court ultimately found for the Plaintiffs to the suit.

• Landmark decision in Tokai Corporation v DKSH Malaysia Sdn Bhd [2016] MLJU 621

Obtained a landmark decision from the Malaysia High Court by establishing thresholds to be met for survey evidence in trademark cancellation actions. Karen represented the Defendant, DKSH Malaysia Sdn Bhd, a leading provider in Malaysia of market expansion services for Consumer Goods, Healthcare and Performance Materials.

• Landmark decision in Agricultural and Processed Food Products Export Development Authority of India (APEDA) & Ors v Syarikat Faiza Sdn Bhd [2011] 2 MLJ 768

Acted as lead counsel for the Applicants including Agricultural and Processed Food Products Export Development Authority of India (APEDA), a statutory authority under the Government of India which is engaged in the development and promotions of exports of certain agricultural and processed food products from India, including a variety of rice known as Ponni rice. The traditional concept of confusion was invoked in respect of geographical indication. The High Court accepted the argument and found for the Applicants.

• Landmark decision in Tiga Gajah Cho Heng Sdn Bhd v Majuperak Tepung Beras Sdn Bhd [1997] 4 MLJ 504

Represented the Applicant, Tiga Gajah Cho Heng Sdn Bhd, before the High Court as well as in the appeal before the Court of Appeal. The High Court established the ingredients required for a Trade Description Orders (“TDO”). The Court of Appeal imposed an unprecedented additional requirement that the Applicant annex the subject mark that was deemed to be a false trade description to the TDO.

Enforcement

Karen has represented various high-profile luxury brands across the world to ensure the value of their IP rights are not tarnished or diluted by counterfeit products. Joint enforcement programmes and anti-counterfeiting strategies were initiated and carefully engineered by Karen to sweep through the country to identify and eliminate counterfeit markets.

• Largest seizure of counterfeit cigarettes with the joint efforts of the Malaysia Ministry of Domestic Trade and Consumers Affairs (MDTCA) and the Royal Malaysian Customs (RMC)

Successfully facilitated the largest seizure of illicit cigarette in the Malaysian ports where a total of 3.5 million units of cigarettes packets with the estimated value of the total seizure is RM31.5 million. This was the joint efforts of MDTCA and RMC.

• Federal International Football Association (FIFA)

Acted for FIFA during FIFA World Cups against various entities based on ambush marketing and unfair competition.

Education

Awards