Michelle C.Y. Loi

Career

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 as well as one of the Asian Arbitration International Centre (AIAC)’s Panelists of the Domain Name Dispute Resolution for the term 2021-2024. She is also 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.

Practice Areas

Data Compliance & Cybersecurity

Healthcare & Life Sciences

Intellectual Property

Telecommunications, Media & Technology (TMT)

Professional Memberships

• Immediate Past President, Licensing Executives Society of Malaysia

• Member, Intellectual Property Committee of the Bar Council Malaysia

• Trainer, Advocacy Training Course, Bar Council, Malaysia

• Panelist, Domain Name Dispute Resolution (2021-2024), Asian Arbitration International Centre (AIAC)

• Member, Competition Committee of the International Chamber of Commerce (ICC) Malaysia

• Member, Bar Council Malaysia

Publications

• Co-authored the Patent chapter of the Thomson Reuters’ “Law and Practice of Intellectual Property in Malaysia” (2025)

• For the past at least 5 years, Michelle is a regular contributor for the Malaysian Chapter for Katzarov’s Manual on Industrial Property.

• Michelle co-authored the Shaping Up Trademark Laws A Good Sign? (Aug 2021)

• The Rise of Merck and the Fall of SKB Shutters (Oct 2019)

• Malaysia: Merck finally shuts the door of SKB Shutters (Oct 2019)

• Copyright Issues Arising from Photos of Architecture (Mar 2019)

• MALAYSIA: Court Rules on Sections of TMA and Goodwill Across Borders (Sept 2018)

• Malaysia -Market Surveys After Liwayway (Nov 2017)

• Michelle co-authored the Malaysian Chapter of Franchising in Asia published by Lex Foundation (2015)

• Franchising in Malaysia (Franchising in Asia, Legal & Business Considerations) (Oct 2013)

• Malaysia Resists International Influence

Languages Spoken

English, Malay, Chinese

Experience

Michelle has been involved in IP precedent-setting cases in the Federal Court.

Litigation

• Merck Sharp & Dohme Corp v. Hovid Berhad [2019] 9 CLJ 1, Federal Court

Was successful in reversing the Federal Court’s very own decision in the SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutters Industries Sdn Bhd & Anor [2015] 6 MLJ 293 which held that the validity of a dependent claim will automatically fall upon the substantive finding of invalidity of its independent claim. On 21 August 2019, the majority of the Federal Court, in allowing Merck Sharp & Dohme held that the validity of dependent claim had to be separately evaluated. Following this latest ruling, the determination of the dependent claims (remitted issue) is now back in the High Court for determination.

Having the Federal Court revisit its previous decision is extremely rare. According to LexisNexis and the Current Law Journal search, there were only 5 cases since 1967 before this case where the Federal Court expressly overruled its own decisions with this case being the first in the IP arena. This case finally did away the precarious position of a dependent claim previously created by the SKB Shutters Ruling and the far-reaching effects created by the SKB Shutters Ruling. Patentees are comforted by this case and can now file their patents with dependent claims without the fear of having the dependent claims being automatically invalidated merely upon the invalidation of its independent claim. Potentially 100,000 patents in Malaysia have been positively impacted by this decision.

• Mesuma Sports Sdn Bhd v. Majlis Sukan Negara [2015] 9 CLJ 125, Federal Court

The Federal Court in this case clarified that a claim for common law ownership over an indicator as a trade mark or source identifier is answered by asking who was the first in time to use said indicator or source identifier as a trademark in a trade mark sense in the course of trade; rather than who had designed or re-conceptualised the said indicator or source identifier. This has a far reaching effect on the relation between trademark and copyright ownership of a trademark or source identifier though in practice, the ownership tend to be common of the same proprietor.

• Liwayway Marketing Corporation v. Oishi Group Public Co. Ltd [2017] 5 CLJ 133, Federal Court

Was successful in overturning both the High Court and Court of Appeal decisions on the facts. This was largely due to the Federal Court’s acceptance of the question of law posed, to wit, In this precedent-setting decision, the Federal Court set out the requirements for market survey often used by party (“person aggrieved”) to support its case of non-use of a trademark by a registered proprietor.

The Federal Court held that compliance with the Whitford guidelines does not automatically translate the ‘person aggrieved’s’ case into one where the prima facie burden of proving non-use has been discharged. Fulfilment of the Whitford Guidelines was not enough as that only addressed the form of a market survey report (or in other words, what a market survey report ought to contain). The substantive aspect of the market survey report is equally important as well. The Federal Court clarified that it is only when both aspects are fulfilled can a person aggrieved be said to have discharged its prima facie burden of proving non-use.

• Maestro Swiss Chocolate Sdn Bhd v. Chocosuisse Union des Fabricants Suisses de Chocolat & Ors & Another Appeal [2016] 4 CLJ 345, Federal Court

The Federal Court in this case recognised the concept of extended form of passing-off but rejected the need for two separate and distinct misrepresentation and confusion tests for both classical and extended forms of passing-off. The Federal Court clarified that if at all, for passing off in extended form there is the need for ‘modification necessary to cater for the specific factual situation arising from the descriptiveness of the term or name to be protected’. The Federal Court further agreed that a trade association, who does not itself manufacture and sell products of the trade mark in dispute (in this case, chocolate and chocolate-related products), does not have the requisite locus standi to sue for common law tort in passing off, whether in its classical or extended form.

This is also one of the rare case that involved consideration of the Geographical Indications Act 2000, namely, section 27 of the Act.

Education

Awards