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Nicole Chong

Partner, Christopher & Lee Ong

Practice Area:

Intellectual Property, Sports & Gaming

LLB (Hons), University of Bristol
LLM in Professional Legal Practice, BPP Law School
Advocate & Solicitor, High Court of Malaya
Barrister-At-Law, Lincoln’s Inn, London

T +603 2273 1919 / +603 2267 2685
E nicole.chong@christopherleeong.com

Nicole is a Partner in the Intellectual Property Practice Group in Christopher & Lee Ong and focuses on intellectual property law in relation to both contentious and non-contentious work. Nicole is recognised as an IP Star by Managing IP in 2022.

Nicole obtained her Bachelor of Laws 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 joined the firm in 2015 and is fluent in English and Bahasa Malaysia.

Nicole possesses passion for Intellectual Property and is currently assisting in litigation work with regards to trade mark, industrial design, copyright and patents. She also assists with the drafting of pleadings, attends court proceedings including High Court, Court of Appeal, and Federal Court, meetings with clients, as well as reviews agreements and liaises with the relevant authorities.

Experience
  • Advised and assisted one of the biggest budget airlines in the world, to handle trade mark audit,  clearance searches and prosecution of trade mark applications for their trade marks for various businesses and to assist them with the filing strategies of the trade marks overseas in ASEAN and in 27 countries worldwide.
  • Advised clients and attended to voluntary copyright notifications filed in Malaysia.
  • Advised and assisted clients on prosecution and protection of trade mark, copyright, patent, industrial design, privacy and trade secrets.
  • Advised small businesses and multinational companies and attended to trade mark applications filed in Malaysia and other jurisdictions.
  • Assisted 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 wastewater 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.
  • Defending 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.
  • Succeeded in representing a Malaysian coffee chain in an action for trade mark infringement, passing off and unlawful interference with trade.
  • Represented a leading motorcycle accessories manufacturer in an action for trade mark infringement.
  • Represented a leading Malaysia-based distributor, supplier and global exporter of motorcycle spare parts in an action for trade mark infringement, passing off and unlawful interference with trade.
Due Diligence & Audit
  • Conduct due diligence on intellectual property rights of the clients and advised the clients on the same.
Commercial / Corporate
  • Represent clients in commercial disputes.
  • Advised on employment related concerns, particularly in relation to intellectual property rights.
  • Assist clients on reviewing and drafting of commercial agreements.
Advertising & Content
  • Assisted and advised in the revamping of the Content Code of Malaysia’s Communication & Multimedia Content Forum.
  • Assist clients in reviewing advertisements to ensure compliance with Content Code and Advertising Standards Authority Code.
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.
Memberships / Directorships
  • Member, Malaysian Bar
  • Member, Kuala Lumpur Bar
  • Member, Malaysian Intellectual Property Association ("MIPA")
  • Member, International Trade Mark Association ("INTA")
Publications
  • Contributor, “Chapter on Intellectual Property”, Malaysian Precedents of Pleadings (3rd Ed), published by Bullen & Leake & Jacob (2023)
  • Contributor, “Chapter on Intellectual Property”, Malaysian Precedents of Pleadings (2nd Ed), published by Bullen & Leake & Jacob (2020)
  • Author, "Image Rights in the 21st Century", published by The Sun (2016)