Janet Toh Yoong San

Partner
Intellectual Property
Technology, Media & Telco

Qualifications

  • LL.B (Hons), University of Bristol
  • LL.M, National University of Singapore
  • Certificate in Legal Practice
  • Advocate & Solicitor, High Court of Malaya

Janet Toh is a partner of the Intellectual Property and TMT practice groups of Shearn Delamore & Co. Janet Toh has wide-ranging experience in intellectual property and technology transactional work. Janet graduated with Second Class Upper Honours in law from Bristol University in 1998. Janet then did her Certificate in Legal Practice and continued with her Masters in Law education at the National University of Singapore under a research scholarship. She then returned to Malaysia to join Shearn Delamore in 2001 where she undertook her pupillage. She was made a partner of Shearn Delamore in 2011.

Janet advises clients on issues relating to intellectual property (IP) protection and ownership, advertising, consumer protection, personal data protection, domain names, e-commerce, franchise, gaming, regulatory approvals for food, cosmetics and drugs and telecommunications. Janet also carries out IP due diligence for licensing, mergers and acquisition projects and e-commerce related transactions.

Technology

  • Advised a startup on its acquisition of AI technology to process and analyse raw satellite images, and drafting of Licence agreement to enable the client to obtain a licence of the technology.

  • Advised a Japanese telecommunications operator, on the feasibility of their IoT related business in Malaysia and the regulations in relation to both cross-border and domestic business (i.e. cloud service, data transfer and telecommunication).

  • Advised a German multinational company, which produces luxury vehicles and motorcycles regarding the offering of different personalised features on its vehicles.

  • Advised a leading fertilizer company and a provider of environmental solutions on its launch and implementation of mobile applications in Malaysia in respect of digital farming.

  • Acted for and assisted an e-scooter company organisation, including advising and reviewing a Terms of Service (client-to-end user) for the implementation of the application in Malaysia; and a Service Agreement (client-to-service provider) for the procurement of necessary services; and a Privacy Policy and Notice.

Trademark Invalidation Proceedings

  • Acted as lead counsel for the Defendant, DKSH Malaysia Sdn. Bhd. in an application brought by Tokai Corporation for, inter alia a declaration that the assignments of its trade mark in respect of “disposable gas lighters’ smokers articles; all included in class 34” to DKSH Malaysia Sdn Bhd were invalid. The matter was significant because the Court decided on issues such as whether a minority shareholder could qualify as a "person aggrieved ", estoppel and/or excessive delay and the assignment of residual goodwill. The High Court dismissed the Plaintiff’s application and held that the assignments were all valid.

Corporate IP

  • Conducted IP & IT due diligence for an ASX listed company in its acquisition of the business and assets of a Malaysian HR SaaS company.
  • Represented the owner of the hotel in the negotiation of a licence for the right to use the licensor’s trade marks for the purposes of the management, operation and marketing of the hotel and serviced residences/suites

Personal Data

  • Advised an international actuarial and consulting firm of the background checks it intended to conduct on (i) all global employees working with the Group who had not already been subject to background checks and (ii) all global candidates, including those applying for job positions offered from a Malaysian legal perspective.

Legal 500 Asia-Pacific
TMT 2020 – Recommended Lawyer for 2 consecutive years (2019, 2020)

World Trademark Review
Prosecution and Strategy 2020 – Recommended Individual for 3 consecutive years

World Trademark Review
Transaction 2020 – Recommended Individual

Who’s Who Legal
Trademarks 2015 – Recommended Individual

  • Former president, Licensing Executives Society Malaysian Chapter
  • Committee member, 2020-2021 Commercialization of Brands Committee, INTA
  • Committee member, Bar Council Cyber Law Committee
  • Member, International Bar Association (IBA)
  • Member, Intellectual Property Committee of the ITechLaw Association
  • Co-author of Chambers Global Practice Guide 2019 Malaysia Pharmaceutical Advertising: Q&A
  • Co-author of Chambers Global Practice Guide 2019 Malaysia Trends and Developments: The Rise of the Machines – Artificial Intelligence & Copyright Law – the Malaysian Landscape
  • Author of Malaysian section of the International Comparative Legal Guide to Telecoms, Media & Internet Law & Regulations 2019
  • Co-author of Malaysian section of the International Comparative Legal Guide to Trade Marks 2018 & 2019
  • Co-author of Malaysian section of the World Trademark Review Anti-Counterfeiting Guide (2010-2017)