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Sheja Ehtesham

Sheja Ehtesham

About Sheja Ehtesham

Sheja Ehtesham is an Intellectual Property attorney at ALG whose practice focuses on trademarks, service marks, trade dress, trade names, domain names, industrial designs, also copyrights and confidential information.

She has responsibility for the trademark and design portfolios of several multinationals across range of industries, including the pharmaceutical, hospitality, home appliances and media & entertainment. Consistently listed amongst the world’s Leading Trademark Professionals in 2021 by WTR 1000, where she has been described by clients as “dynamic, personable and most importantly, an excellent attorney whose counsel inspires trust.” She currently also serves as Co-Chair of INTA’s Project Team on IP in Outer Space, and the India Global Advisory Council.

Sheja has experience in international portfolio management, including pre-filing clearances and availability searches, helping clients devise global filing strategies that align with their business requirements. Enforcing and defending intellectual property in oppositions, cancellations and appeals before the Trademark Office, the Designs Office, the Copyright Office, NIXI (National Internet Exchange of India), and various courts are other areas of expertise. She has also successfully represented several domestic and international clients in domain name administrative proceedings under the INDRP and UDRP.

She advises clients in strategizing negotiations carried out with adversaries and on structuring successful and profitable settlements. She advises clients on intellectual property transactional issues and has experience in drafting, reviewing, and counseling clients on IP license and assignment agreements, franchising agreements, co-branding agreements, distributorship agreements, joint-venture agreements, strategic alliance projects, coexistence and consent agreements, and rights re-structuring agreements and activities.

She assists clients in devising effective enforcement strategies, which include conducting investigations, drafting and issuing Legal Notices, conducting raids with local officials, and registering IP rights with custom authorities. She has been involved in enforcement actions involving infringement and passing off, piracy, unauthorised use, falsification of trademarks, misappropriation of confidential information, breach of confidentiality, misrepresentation, unfair trade and anti-competitive practices, etc. She has experience in litigation pertaining to trademark infringement and passing off, trade name disputes, false advertising, trademark dilution, trademark debasement, domain name disputes and piracy of designs and copyrights. She assists and advises clients in lawsuit strategy and preparing for various activities at different stages of litigation.

She has previously served as the co-chair of the Asia Pacific Region of the INTA Bulletin, and an editor of The Trademark Reporter, the world’s only peer-reviewed, scholarly journal dedicated to trademark law and related topics internationally. In recognition of her contributions to trademark law and to the association, INTA did a volunteer spotlight article on Sheja in 2016.

She has been invited as a speaker and India expert at various national and international fora, and her articles frequently feature in the INTA Bulletin, and as part of International practice-oriented white papers and reports.

 

Licenses,
Accreditations, Internships & Education

 

·
Advocate, Bar Council of Karnataka

·
Judicial Clerkship with Hon’ble Justice Mr.
Aftab Alam, Supreme Court of India

·
B.A. LL.B. (Hons.), National Academy of Legal
Studies and Research (NALSAR), Hyderabad.

·
Diploma in Advanced Intellectual Property
Laws, Oklahoma University, USA

·
Internship with Office of Technology Transfer,
National Institutes of Health, Maryland USA

Reported
& Other Cases (Representative)

·     Westinghouse Electric Corporation v. Sakir
Saleem, As Service Centre WIPO Domain Name Decision D2021-0558

·
Incase Designs Corp. v. Stavros
Fernandes Case No. INDRP/1209

·
Glen Raven, Inc. v. DingDing Case No.
INDRP/989

·
Indeed, Inc. v Josh Mathews Case No.
INDRP/948

·
Indeed, Inc. v. Indeedworld Case No.
INDRP/931

·
Leidos, Inc. v. Leidos Inc Case No.
INDRP/820

·
Capital IQ, Inc and Anr v. Ye Li WIPO
Domain Name Decision D2014-1647

·
Ecolab USA Inc. V. Nijat Hassanov NAF
Case No. 1378085

·
The Ritz-Carlton Hotel Company, L.L.C. v.
Netlon! Brands Inc. Case No. INDRP/250

·
Merck Sharp & Dohme Corp. v. Marketing
Munch Pty Ltd Case No. INDRP/230

·
Standard & Poor’s Financial Services LLC
v. Corporate Domains, Inc. Case No. INDRP/162

·
Spotlight Series, 2016

 

Recognition, Awards, Citations & Mentions
  • Featured amongst the world’s Leading Enforcement and Litigation Professionals in World Trademark Review’s WTR 1000 rankings, 2023
  • Recipient of ‘India’s Leading Intellectual Property Lawyer of the Year’ Award, Leaders in Law Global Awards 2022
  • Ranked amongst India’s top Intellectual Property Lawyers of 2022 by Asia IP
  • Listed amongst the world’s Leading Trademark Professionals in World Trademark Review’s WTR 1000 rankings, 2022
  • Ranked amongst India’s top Intellectual Property Lawyers of 2021 by Asian Legal Business (ALB)
  • Listed amongst the world’s Leading Trademark Professionals in World Trademark Review’s WTR 1000 rankings, 2021
  • Described as “extremely responsive and pragmatic” in World Trademark Review’s WTR 1000 rankings, 2020
  • Featured among recommended practitioners for Trademark Prosecution and Litigation in India by Leaders League, 2020
  • ‘India Managing Partner of the Year’ – Finalist, 2018, Asian Legal Business (ALB)
  • ‘Most Influential Women in Trademark & Design Law’, 2018, AI’s 2018 Global Excellence Awards
  • ‘Trademark & Design Lawyer of the Year in India’, 2018, ACQ Global Awards
  • Interviewed by (International Trademark Association) INTA Bulletin as part of its Spotlight Series, 2016

Publications
& Submissions

·
‘INDIA: Delhi High Court Rules Color Red for
Shoe Soles Not a Trademark’, (International Trademark Association) INTA
Bulletin, 2018

·
India Chapter of
Intellectual Property Owners Association (IPO) White paper ‘Protection of
Graphic Logo Trade Marks Around the World – Copyright or Trade Mark
Enforcement? An International Survey of Twenty Countries’, 2017

·
India Chapter of
Intellectual Property Owners Association (IPO) White paper ‘Shape Trademarks –
An International Perspective’, 2015

·   ‘Indian Affidavits of Use: A Tool for
Effective Trademark Prosecution and Enforcement’, (International Trademark
Association) INTA Bulletin Vol. 66 No.19, November 1, 2011 (with Andrew Price
& Rebecca Liebowitz)

·      ‘Case Comment on Brajnandan Sinha Versus Jyoti
Narain (AIR 1956 SC 66)’, All India Reporter (AIR) 2010

·
‘Patents Patents Everywhere, No Revenue in
Sight!’, SpicyIP.com, August 9, 2009

·     ‘A Critical Analysis of the Indian Policy on
Seeds – Bane or Boon?’, SpicyIP.com, August 3, 2009 (with Nirajan Mansingh)

·       ‘Conflicting Interests in Drug Pricing:
Innovation v. Social Needs’, 94(2) CURRENT SCIENCE 168, January 25, 2008 (with
Nirajan Mansingh)

Speaking
Engagements & Related Events

·      Moderated Panel on “Trademarks in Outer Space
– The New Space Race?” in INTA Leadership Meeting, 2022

·
Presented on IP in Outer Space in INTA Annual
Meeting, 2022

·    Speaker on “Trademarks Off World: New Frontier
Or Lost in Space” in FICPI Open Forum Meeting, 2021

·      Invited by INTA (International Trademark
Association) as Panelist in discussion on “The Well-Rounded IP Practitioner” in
INTA Annual & leadership Meeting, 2020

·   Speaker on ‘Brand Protection and Enforcement
Strategies’ in (Associated Chambers of Commerce of India) ASSOCHAM’s Conference
on Building the Best Innovative India organised jointly with Ministry of Micro,
Small and Medium Enterprises (MSME), Government of India, 2020

·        Speaker on ‘Compulsory Licensing in the Age of
COVID-19’ international webinar presented by The Women in IP Network, 2020

·    Speaker on ‘Graphic Logo Marks – Intersections
Between Copyright & Trademarks’ international chat channel presented by
Intellectual Property Owners’ Association (IPO), 2019

·
Speaker on ‘Trademarks & Counterfeits’ on
invitation from Niti Aayog’s Atal Innovation Mission and the Government of
India’s CIPAM as part of Live Facebook Series, 2018

·
Speaker on ‘Biologics and Pharmaceutical IP’
by special invitation to the BioAsia International Conference, 2018

·  Moderated Table Topic on “Clearing Pharmaceutical
Trademarks: Practical Insights”, (International Trademark Association) INTA
Annual Meeting, 2015

·    Invited by IPO (Intellectual Property Owners
Association) as India-Expert and Panelist in Session on “Shape Trademarks” in
IPO Annual Meeting, 2015

·    Invited by IPO (Intellectual Property Owners
Association) as India-Expert and Panelist in Session on “Bad Faith Trademarks”
in IPO Annual Meeting, 2013

Boards,
Committees, Trust & Positions

·
Serves as Co-Chair of the International
Trademark Association (INTA) Project Team on IP in Space, 2022 – 2023

·      Serves on the International Trademark
Association (INTA) Leadership Development Committee, 2022 – 2023

·
Serves on the International Trademark
Association (INTA) India Global Advisory Council, 2022 – 2023

·
Serves on the Intellectual Property Owners
Association (IPO) Diversity & Inclusion Committee, 2023

·     Serves on the Intellectual Property Owners
Association (IPO) Women in IP Law Committee, 2023

·      Served on the International Trademark
Association (INTA) Leadership Meeting Project Team, 2022

·   Served as Chair of the International Trademark
Association (INTA) Bulletin Asia Pacific Subcommittee, 2020 – 2021

·   Served as Editor, The Trademark Reporter,
published by INTA (International Trademark Association), 2016 – 2017

·
Served on India Roundtable Project Team of
International Trademark Association (INTA) India Roundtable Project Team, 2020
– 2021

·        Served on the International Trademark Law
& Practice Committee of the Intellectual Property Owners Association (IPO),
2020 – 2021

Affiliations,
Memberships & Participations

·         Member, Supreme Court Bar Association (SCBA)

·
Member, Delhi High Court Bar Association (DHCBA)

·
Member, India International Centre (IIC)

·
Member, International Trademark
Association (INTA)

·
Member, MARQUES

·
Member, International Association for the
Protection of Intellectual Property (AIPPI)

·
Member, Pharmaceutical Trade Marks Group (PTMG)

·
Member, Intellectual Property Owners
Association (IPO)

·
Member, Asian Patent
Attorneys Association (APAA)

Languages

·
English

·
Hindi

·
Urdu

 

Q&A With Sheja Ehtesham

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