Nicole Chong
Key Practice Areas:
Nicole obtained her Bachelor of Laws (LL.B.) degree from the University of Bristol, United Kingdom in 2009. Thereafter, she completed both the Bar Vocational Course and Masters in Professional Legal Practice at BPP Law School, London. She was then called to the Bar of England and Wales by the Honourable Society of Lincoln’s Inn in July 2010. After undertaking various and numerous work placements and mini-pupillages in the United Kingdom, she commenced her pupillage in Malaysia and was subsequently admitted and enrolled as an Advocate and Solicitor of the High Court of Malaya in May 2014. She was with one of South East Asia’s largest legal networks until 2024, and is fluent in English and Bahasa Malaysia.
Nicole possesses a passion for Intellectual Property and is currently involved in litigation work with regards to trade mark, industrial design, copyright and patents. She also drafts pleadings and attends court proceedings including the High Court, Court of Appeal, and Federal Court, as well as reviews agreements and liaises with the relevant authorities.
- LL.B (Hons) (University of Bristol)
- LLM in Professional Legal Practice, BPP Law School
- Malaysian Bar
- Barrister-At-Law, Lincoln’s Inn, London
- English
- Bahasa Malaysia
- Rising Star, Trademark, IP Stars – Managing IP
Intellectual Property – Registration & Prosecution
- Advising clients and attending to voluntary copyright notifications filed in Malaysia.
- Advising and assisting clients on prosecution and protection of trademark, copyright, patent, industrial design, privacy and trade secrets.
- Advising small businesses and multinational companies and attending to trademark applications filed in Malaysia and other jurisdictions.
Dispute Resolution
- Assisting with the drafting of pleadings and preparation for trials pertaining to trade mark infringement, copyright infringement and patent infringement.
- Represented a local motorcycle manufacturer in a copyright infringement action commenced by a renowned multinational motorcycle manufacturer.
- Represented ex-employees of a software company in an action for copyright infringement, breach of employment contract and duty of fidelity / fiduciary / trust, breach of confidence and conspiracy / unlawful interference with trade.
- Represented the manufacturer of a waste water treatment machine in a copyright infringement action against ex-employees who misappropriated company trade secrets and set up a competing business.
- Acted for a Middle Eastern fast food chain in cancelling the trade mark registration of its competitor in Malaysia.
- Assisted a company in a patent infringement and invalidation action initiated by a competitor.
- Represented a well-known foreign tea manufacturer with the negotiation of an assignment of a trademark filed by a local Malaysian company.
- Succeeded in representing a global hotel chain and real estate group in a trade mark infringement action against a local entity.
- Succeeded in representing a foreign toothpaste manufacturer in a trademark expungement / cancellation action against a local distributor.
- Succeeded in representing a foreign toothpaste manufacturer in a passing off, breach of contract and unlawful interference with trade action against a local distributor.
- Succeeded in representing a renowned foreign real estate developer against a local entity regarding domain name dispute proceedings.
- Defended a renowned foreign real estate developer in an action to dismiss the AIAC’s decision involving the transfer of a domain name.
- Represented an international training company in an action for breach of employment contract and duty of fidelity / fiduciary, copyright infringement, breach of confidence and unlawful interference with trade.
Due Diligence & Audit
- Conducting due diligence on intellectual property rights of clients and advising clients on the same.
Commercial / Corporate
- Representing clients in commercial disputes.
- Advised on employment related concerns, particularly in relation to intellectual property rights.
- Assisting clients on reviewing and drafting of commercial agreements.
- Undertook a 5 months’ virtual secondment with an MNC in providing IP and general corporate commercial legal assistance.
- Undertook a 1-month virtual secondment with an international bank in providing assistance to their IP Legal Team.
Information Technology
- Represented client in domain name dispute proceedings at both the Asian International Arbitration Centre and High Court.
- Reviewing agreements for software licensing.
Anti-Counterfeiting
- Raid exercise for local and foreign brand owners.
- Assisted multinational companies with enforcement strategy against counterfeits and with the execution of raids with law enforcement officers.
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