Colin Cheung

I work with my clients to understand their operations and commercial objectives. Armed with that understanding I can implement strong intellectual property strategies that achieve those objectives. I measure the success of a project directly against my ability to deliver my client the agreed outcomes – effectively and cost efficiently.

Experience

Colin has over 18 years experience assisting business owners and companies across all industries to identify, protect and enforce their intellectual property rights. He has acts for owners of small to medium sized businesses and works with directors and in-house counsel of large national and multinational companies. He also collaborates with local commercial law firms and overseas IP law & attorney firms assisting them with their clients’ Australian intellectual property requirements. Colin has strong expertise in brand protection – trade mark dispute resolution & litigation (Federal Circuit Court and Federal Court of Australia) and trade mark oppositions (Australian Trade Marks Office). He is also regularly involved in a broad range of other types of intellectual property disputes – copyright, misleading & deceptive conduct cases, registered designs & patents.

Approach

Colin is known for his straight talking approach, clear advice and commercially pragmatic recommendations. He is a lateral thinker, skilled negotiator and strong litigator. His ability to think strategically and outside of the square has helped his clients on many occasions to achieve commercially favourable outcomes in intellectual property disputes and by doing so, minimising the cost and distraction of a full blown litigation.

Recognition

As one of the Principals of Actuate IP, Colin has overseen the firm regularly identified as a leading intellectual property law firm:

• 2021 World Trade Mark Review 1000: annual rankings of the world’s leading trade mark professionals – Colin was ranked as a Recommended Expert in Australia
• 2020 World Trade Mark Review 1000: annual rankings of the world’s leading trade mark professionals – Colin was ranked as a Recommended Expert in Australia and identified as “an indispensible ally of SMEs in need of the full range of IP services“.
• 2019 World Trade Mark Review 1000: annual rankings of the world’s leading trade mark professionals – Colin was ranked as a Recommended Expert in Australia and identified as a “tough and active player in contentious matters with a first-class reputation amongst barristers“.
• 2016 Corporate Intl Global Awards: Boutique Category – IP Litigation Firm of the Year in Australia
• 2015 Doyles Guide – Leading Victorian Copyright & Soft IP Law Firms – Recommended Category
• 2014 Corporate Intl Global Awards – IP Law Firm of the Year in Australia
• 2014 Managing Intellectual Property – World IP Survey Ranked Firm – Trade Mark Prosecution and Contentious Category
• 2012 Managing Intellectual Property – World IP Survey Ranked Firm – Trade Mark Prosecution and Contentious Category. Colin was identified as an “accomplished partner” in the Australian intellectual property market overview.

Expertise and Track Record

He has particular expertise in patent and trade mark dispute resolution and litigation. Examples of Colin’s track record includes:

• acting for a specialist manufacturer of shipping container insulation materials in Federal Court patent infringement and patent inventor / entitlement claims
• acting for a leading international manufacturer of solar panel components as the patent owner and applicant in Federal Court patent infringement proceedings against two Chinese based manufacturers
• acting for a manufacturer of specialist fruit punnet containers in Federal Court patent and design infringement proceedings
• acting for the trade mark and patent owner of a TGA approved product in a complex contractual and intellectual property dispute
• acting for a multinational clothing manufacturer against an Australian based counterfeitor in the Federal Court
• acting for a US based manufacturer of internationally distributed tea as the trade mark holder in Federal Court trade mark infringement and misleading and deceptive conduct proceedings. Achieving one of the highest monetary awards for additional damages for trade mark infringement against both respondents.
• acting for a multinational manufacturer of beauty care products in Federal Court trade mark infringement proceedings against a wholesaler of counterfeit products
• acting for a leading manufacturer of specialist high end cycling clothing in a pre-litigation dispute against a number of counterfeitors
• acting in a domain name dispute for a prominent Australian charity organisation to recover a domain name from a cybersquatter
• acting for an Australian winery as the trade mark holder in Federal Court trade mark infringement proceedings
• acting for an Australian mattress manufacturer as the applicant in registered design infringement proceedings in the Federal Full Court
• acting in numerous trade mark opposition proceedings for both the trade mark applicant and the opponent at the Trade Marks Hearings Office of IP Australia.
• acting for a UK manufacturer of children specific luggage in pre-litigaton against knock off product designs in Australia.