Teo Bong Kwang
Partner
Bong Kwang is one of the Firm’s founding partners. He presently heads the Firm’s litigation and patent departments. With more than 33 years of experience in IP practice, Bong Kwang handles a wide range of intellectual property matters with a principal focus on contentious IP matters. He regularly represents various multinationals from diverse industries and acts as counsel to instructing solicitors at the superior courts in matters involving complex issues relating to IPRs, information and communication technology (ICT), and laws relating to drugs, pharmaceuticals and cosmetics. He is frequently sought after for his expertise in formulating litigation strategies, pursuing interlocutory relief such as injunction and Anton Piller orders as well as conducting full trials.
Bong Kwang’s notable litigation experiences include:
- Representing the inventor of an apparatus that is widely used in the palm oil industry in respect of its claims for patent and copyright infringement at the Federal Court. The novel issues before the apex court concerned, among others, the pleading requirements in a patent trial and the interplay between the concepts of “novelty” in patent law and “originality” in copyright law. (YKL Engineering Sdn Bhd v Sungei Kahang Palm Oil Sdn Bhd & another, Civil Appeal No.: 02(f) – 9 - 02/2021(J))
- Representing a local award-winning property developer in an action for trademark infringement and passing off against various tourism development companies at the Federal Court. The appeal concerned the novel issue of whether a corporate name consisting of an essential element of a registered trademark would amount to trademark infringement and/or passing off. (Skyworld Holdings Sdn Bhd & 6 others v SkyWorld Development Sdn Bhd & another, Civil Appeal No.: 02(f)-50-09/2020 (W))
- Representing a multinational US corporation in the nanostructured metal alloys sector in successfully defending an opposition action against its trademark registration application. (Merck KGAA v Xtalic Corporation, Originating Summons No.: WA-241P-11-07/2018)
- Representing the inventor of a floor trap in its claim for patent infringement at the Federal Court. Among the novel issues before the court concerned the test for determining the inventive concept of an invention. (Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Anor [2018] 4 MLJ 34)
- Representing a manufacturer of local delicacies at the Federal Court in relation to the scope and application of section 9 of the Trade Descriptions Act 2011. (Tan Kim Hock Product Centre Sdn Bhd & Anor v Tan Kim Hock Tong Seng Food Industry Sdn Bhd [2018] 2 MLJ 1)
- Representing the manufacturer of an apparatus used for testing semiconductor elements in successfully defending a claim for patent infringement. (Pentamaster Instrumentation Sdn Bhd v QAV Technologies Sdn Bhd & Ors [2017] 11 MLJ 233)
- Representing and successfully defending the owner of a civil engineering patent relating to a method for constructing retaining walls and fly-overs in a patent invalidation action. (Nehemiah Reinforced Sdn Bhd v Patrick Cyril Augustine & Anor [2012] 9 MLJ 112)
- Representing a national association in the ICT industry in its claim for trademark infringement, passing off and breach of confidential information against its former employee. (Shaifubahrim bin Mohd v EM Exhibitions (M) Sdn Bhd & Anor [2012] 9 MLJ 84)
- Representing a multinational Danish pharmaceutical company in successfully establishing its claims for trademark infringement and passing off involving well-known pharmaceutical trademarks at the High Court. (Leo Pharmaceutical Products Ltd A/S (Lovens kemiske Fabrik Produktionsaktieselskab) v Kotra Pharma (M) Sdn Bhd [2009] 5 MLJ 703)
- LLB (Hons), University of Malaya, Malaysia (1986)
- Master of Laws, University of Malaya, Malaysia (1996)
- Advocate and Solicitor, High Court of Malaya (1987)
- Registered Trademark Agent
- Registered Patent Agent
- Registered Industrial Design Agent
- Member of the Executive Committee, Malaysian Intellectual Property Association (MIPA)
- Member, Society of Alumni of Association of Overseas Technical Scholarship Malaysia (AOTS)
- Former Assistant Secretary, Licensing Executive Society Malaysia
- Former Deputy Chair of the Legal Committee, Chinese Chamber of Commerce and Industry of Kuala Lumpur and Selangor
- Member, International Trademark Association (INTA)
- Member, Asian Patent Attorneys Association (APAA)
Bong Kwang has been consistently identified as one of the leading individuals in IP for many years by, among others, Legal 500, Chambers and Partners, Benchmark Litigation, Who’s Who Legal (Trademark), World Trademark Review 1000, IAM Patent 1000 and Managing IP. He is also ranked as one of Malaysia’s Top 100 Lawyers by Asia Business Law Journal in 2020 and 2021.
Bong Kwang served as a member of the Copyright Law Review Committee set up by the Law Revision and Law Reform Division of the Attorney General’s Chambers, Malaysia. He was also a member of the committee set up by the Intellectual Property Corporation of Malaysia (MyIPO) to review the Trade Marks Act 1976 (now repealed) and advise on the drafting of the Trademarks Act 2019.
Bong Kwang has published several books including the first local textbook on trademark law and practice - "Trade Mark Law and Practice in Malaysia" (Butterworths, 2001), which has been widely consulted by law students, trademark examiners and IP legal practitioners. It has also been cited with approval by the Malaysian High Courts in many cases. In April 2021, Bong Kwang published the updated version of the textbook - “Law of Trade Marks and Passing Off in Malaysia” (LexisNexis, 2021). He is also the Advisory Editor for “MLJ Trade Marks and Service Marks Handbook” (LexisNexis, 2003).
Bong Kwang is currently one of the Malaysian correspondents for World Trademark Review. He also regularly contributes articles and write-ups on IP-related issues published in local newspapers and magazines.
