Nicholas specialises in intellectual property (IP) and information technology (IT) matters. He has carried out several successful IP enforcement programs, involving both self-financing IP enforcement work and private prosecution proceedings against infringers. Both he and some of his anti-ambush marketing work for organisations such as the Union of European Football Associations (UEFA) and companies such as Daiso Industries have been cited in the Asia Pacific Legal 500.
He has also acted for clients in several contentious IT disputes. While his clients in such matters vary from governments, to small-medium size enterprises, a lot of the problems that they face are similar, and he has developed a good sense of the kinds of issues regularly faced by IT companies and their customers when implementing large scale IT solutions.
He has also acted for clients in various contentious IP disputes. These range from contractual disputes relating to the licensing of software copyright, or the transfer of intellectual property pursuant to a joint venture, to the more typical trade mark, copyright, patent and design infringement, and passing off. He has significant experience in both arbitration (under the ICC Rules and the SIAC Rules) and Singapore court proceedings, and has worked with both Senior Counsel and Queens Counsel on various matters.
Apart from contentious work, Nicholas also handles non-contentious IP matters and is assisting in the management of the IP portfolios of several major companies, both in Singapore and elsewhere
His experience includes:
IT related matters
- Assisted in representing a well-known IT solutions provider in an arbitration in Singapore under the ICC Rules commenced by a Malaysian Islamic bank in an IT implementation dispute.
- Advised and represented a well-known multi-national software company in an arbitration in Singapore under the SIAC Rules against an ex-distributor of their software for breach of software licensing agreements.
- Assisted in representing the government of a South East Asian country against a multi-national IT solutions provider in relation to various disputes relating to the provision of various IT services and hardware.
- Advised and represented a regional wealth management software provider in defending a claim by an international testing solution company for the payment of monies due under an IT contract, and raising a counterclaim for the failure to deliver an automated test bed.
- Advised a local vendor of train-borne software in a contractual dispute with their various companies relating to support in relation to hardware and software implemented.
- Advised a prominent Japanese video entertainment company on amendments to its end user license agreement in light of companies in Singapore re-selling their video games consoles.
IP related matters
- Assisted in representing a prominent Chinese company in SIAC Arbitration proceedings in Singapore commenced by Canadian parties for alleged breaches of a joint venture agreement, which encompassed a transfer of patents and technology in road recycling machinery.
- Running an IP enforcement program for a prominent Japanese video entertainment company, including carrying out of raids with the Intellectual Property Rights Branch of the Singapore Police, and private prosecution of infringers.
- Acted for a local property agency in defending allegations and proceedings brought by a local property agent training company for alleged copyright infringement by one of their agents.
- Acted for a local distributor of souvenir t-shirts against infringers of the copyright in the images on the t-shirts.
- Advised a local licensee of a massive multiplayer online role playing game in relation to possible IP infringement by parties running the game off unofficial servers.
- Assisted in acting for a well-known multi-national software company in carrying out an IP enforcement raid against an official distributor of its software who was in fact, manufacturing and selling counterfeit copies of its software.
- Advised a Japanese household products chain against allegations of trade mark infringement by an American printer company relating to printer ink refills.
- Carried out intellectual property enforcement and anti-ambush marketing programs for various international football federations during major international football tournaments in 2010 and 2012.
- Acted for a prominent local high-end property developer in an action for trade mark infringement and passing off against a local furniture developer.
- Advised a Japanese fashion retailer in respect of a raid carried out against them by an Italian fashion house for alleged trade mark infringement.
- Advised an integrated resort company in relation to possible UDRP proceedings against a cyber-squatter using a URL similar to the company name.
- Advised a local fashion retailer in respect of allegations of trade mark infringement by a French fashion design house.
- Advised a local statutory board in an intellectual property rights dispute against a local sports association with respect to a well-known annual marathon event, and in relation to doping allegations against a participant of the said event.
- Acted for a local metal works company against various competitors in disputes relating to registered design infringement.
- Acted for a prominent food centre management company in a trade mark dispute against a party from China relating to the registration of a company name.
- Acted for a well-known French jewelry and watch manufacturer in trade mark revocation and invalidation proceedings against the rights holder of a famous historic racing series.
Other recent notable matters
- Acted for the shareholders of a local metal works company against ex-business partners who were claiming shares in the company under an alleged trust arrangement.
- Acted for a prominent multi-national software company in defending defamation proceedings commenced by an ex-local distributor against it and its employees.
- Acted for a prominent international software company in obtaining orders for depositions in Singapore to be taken in assistance of US Court proceedings, pursuant to letters of request.
- Advised an international cruise line on potential claims in contract by a group of passengers.
- Acted for a local automated door and louver solutions company in claiming against a sub-contractor for sums claimed by the main contractor for damage caused to the property development.
- Assisted in acting for a local construction company against a main-contractor in claiming for sums payable for scaffolding works completed.
- Represented a project manager of a construction project in claiming project management fees from the owner of the development under the contract.
- Acted for a local company and its director in defending a claim by the director’s ex-employers for alleged breach of contract.
Reported and Unreported Cases
- Cheng Song Chuan (trading as Trade Sources Enterprise) v Chin Ivan  SGHC 39
- Public Prosecutor v Low Meng Guan  SGMC 2
- Obtained various search orders and conducted various criminal private prosecutions in relation to trade mark and copyright infringements on behalf of intellectual property rights owners.
- Acted in various confidential international arbitration proceedings for various clients under the ICC and SIAC Rules.
Memberships / Directorships
- Member, Singapore Academy of Law
- Member, Law Society of Singapore