Sumitra Kaneyasen
Kuala Lumpur
Summary
Member of an award-winning trade mark team recognized for the robust safeguarding of its international banking brand valued around USD 7 - 8 billion, Sumitra brings a wealth of experience in brand protection. She is regarded as a detail-oriented professional who leverages on strategic communication and analytical skills to drive commercial objectives.
Overview
7
7
years of professional experience
1
1
Certification
Work History
Trademark Associate, IP & Brand Legal
Standard Chartered Global Business Services
07.2023 - Current
- Delivered a USD 50,000 cost saving to stakeholders for a global clearance on proposed taglines using trade mark tool, Corsearch.
- Routinely performance of horizon risk scanning for key brands through Corsearch by reviewing results, assessing risks and reporting the same to stakeholders on a timely basis.
- Manages large, multi-market trade mark portfolios by driving commercial objectives through local agents, effectively managing budgets and maintaining clear communication with stakeholders.
- Facilitates resolution of intricate office actions in challenging markets as well as those against new and innovative trade mark specifications.
- Developed detailed trade mark specifications aimed at strengthening brand protection in developing service areas including metaverse, blockchain, and artificial intelligence i.e., futureproofing key brands.
- Analysed sound trade mark availability across various filing countries and confirmed cleared usage of proposed sound mark for internal purposes, adhering to YouTube's terms of service requirements.
- Performed reviews on technology asset contracts from an IP perspective as part of UK regulatory review on operational resilience.
- Performed reviews on Power of Attorney (PoA) documents in line with internal requirements.
- Transformed complex, bulk data from participating law firms into presentable formats as part of an extensive request for proposal (RFP) process to enable efficient and transparent decision making.
- Experienced in financial administration for internal projects, i.e., budget creation and invoice processing.
Analyst, Corporate & Institutional Banking Legal
Standard Chartered Global Business Services
09.2021 - 07.2023
- Advised on contractual limitations of corporate and institutional loan agreements on the disclosure of confidential information to third-party investors.
- Supported the New York legal team with compliance assessments of draft loan agreements against internal policies and American regulations.
- Identified risks associated with premature client offboarding for over 1,700 clients across the Bank's global footprint.
Paralegal
Messrs. Law Partnership
10.2019 - 08.2021
- Participated in a ministerial raid for counterfeit alcohol within the Kuala Lumpur city area on behalf of a France-based multinational corporation.
- Experienced in enforcement of IP rights on digital platforms by conducting investigations on online infringements and producing monthly reports for international conglomerates on the same.
- Drafted and assisted with preparing cause papers for an Anton Piller order application, which was successfully granted ("the Order"), on behalf of a public-listed, international software company, specializing in financial technology.
- Participated in the highly contentious five days' long execution of the Order at the Defendants' office premises by performing digital searches on the seized devices under the guidance of the digital forensic team of Deloitte; actively collaborated with supervising solicitors by ensuring they received the information and documents they required, while reporting to the Partners of the firm.
- Drafted preliminary opinions on domain name registration and remedies to online infringement in Malaysia to an international toy production company based in Denmark, setting up online stores in the region.
- Assisted with drafting preliminary opinions on a patent infringement case for an international supplier of high-tech rescue equipment.
- Prepared first drafts of cause papers and assisted the partner of the firm in court for: a landmark trademark dispute case, which went up to and was successful at the Court of Appeal of Malaysia. This case involved complex and novel issues to the intellectual property laws of Malaysia including the assignment of unregistered marks and goodwill; contempt proceedings for a trademark dispute involving pharmaceutical products; assessment of damages hearings for a trademark dispute case; and contentious probate cases and tenancy disputes.
- Drafted Statutory Declarations under section 42 of the Copyright Act 1987 for highly technical and specialized financial technology software.
- Prepared drafts of licensing agreements.
- Managed multiple local and international trademark portfolios.
- Assisted in trademark applications that the firm handles and experienced in drafting submissions in response to objections raised by both the Intellectual Property Corporation of Malaysia (MyIPO) and the Intellectual Property Office of Singapore (IPOS).
- Responsible for designing and revising the firm's trademark search report, which provides clients with an in-depth assessment of the overall chances of successful registration of potential marks.
- Appointed to review all drafts of trademark search reports as prepared by the firm's IP Executives.
- Appointed to provide training to IP Executives on how to perform trademark searches across Southeast Asia.
- Involved in the standardisation of local and foreign quotations for IP prosecution by working on a unifying system for the same in an effort to reduce time spent on preparing quotations and increase the overall efficiency of the team.
Legal Intern
Messrs. Law Partnership
06.2019 - 09.2019
- Highly involved in the enforcement of IP rights on digital platforms by investigating online infringements by performing searches and producing monthly reports to international conglomerates on the same.
- Key personnel in the digitization of the firm's trademark portfolios via the Intellectual Property Data Management System (IPDMS).
- Assisted in contentious probate cases and tenancy disputes by preparing the first drafts of affidavits, witness statements and written submission and assisting the partner of the firm in court.
Education
Bachelor of Laws - Second Class Honours Lower Division
University of London
01.2021
Cambridge A Levels - Law, Economics, Psychology
Sunway College
Sijil Pelajaran Malaysia (SPM) -
SMK Batu Unjur
Skills
- Trade mark clearance advisory
- Trade mark horizon risk scanning
- Brand protection and enforcement
- Project management
- Microsoft Excel proficiency
- Data entry and database management
- Stakeholder communication
- Teamwork and collaboration
Secondment
Secondment to Intellectual Property & Brand Legal, Standard Chartered Bank as a specialist between February 2020 to July 2020.
Certification
- Registered Trade Mark Agent at the Intellectual Property Corporation of Malaysia (MyIPO)
- Oxford Digital Assets Certification Programme - Said Business School, University of Oxford
Languages
English
Proficient
C2
Malay
Proficient
C2
Indonesian
Advanced
C1
Chinese (Mandarin)
Elementary
A2
Tamil
Elementary
A2
Timeline
Trademark Associate, IP & Brand Legal
Standard Chartered Global Business Services
07.2023 - Current
Analyst, Corporate & Institutional Banking Legal
Standard Chartered Global Business Services
09.2021 - 07.2023
Paralegal
Messrs. Law Partnership
10.2019 - 08.2021
Legal Intern
Messrs. Law Partnership
06.2019 - 09.2019
Bachelor of Laws - Second Class Honours Lower Division
University of London
Cambridge A Levels - Law, Economics, Psychology
Sunway College
Sijil Pelajaran Malaysia (SPM) -
SMK Batu Unjur