Solicitor - Trademarks, Copyright and Designs

Posted 15 hours 4 minutes ago by Experis IT

Contract
Not Specified
Other
London, United Kingdom
Job Description

Job Title: Solicitor - Trademarks, Copyright and Designs
Start Date: ASAP
Location: London (Hybrid)
End date: End of July/August

The Client
Be a part of a revolutionary change. We've chosen to do something incredible. We're totally transforming our business and building our future with smoke-free products that have the power to improve the lives of a billion smokers worldwide.

Are you a solicitor or trademark attorney with IP experience gained in a law firm and/or in-house in an international company (or an international lawyer with equivalent qualifications and experience)? Are you driven by getting things done and making a difference? Do colleagues appreciate your collaboration, contribution and performance? If yes, this job might just be for you. We are hiring a Counsel to join our Trademarks, Copyright and Designs team for a six-month period.

THE OPPORTUNITY
The Trademarks, Copyright and Designs group is spread over three locations around the world: London, Connecticut, and Hong Kong. We actively clear, protect and enforce our company's trademarks, designs and copyright - and also provide the Phillip Morris business with IP advisory services. You will join the team based in London, at our Global Studio, located at One New Change.

You will report to a Senior Counsel within the TCD team. You will work with both legal and business colleagues at PMI, assisting them with conducting trademark clearance searches, providing clearance advice from a copyright perspective, filing and prosecuting trademark applications, and enforcement, including oppositions, cancellations and court proceedings.

Specific responsibilities include:

  • Working closely with internal clients and outside counsel to review and clear new pack designs, marketing material, innovations, main brands, sub-brands, product features, slogans and logos - including conducting online searches and reviewing and reporting full availability searches.
  • Trademark portfolio management: managing and prosecuting our trademark portfolio - including handling significant registry objections such as non-distinctiveness and relative grounds objections.
  • Actively running disputes: contentious matters before trademark registries (active and passive oppositions and cancellations) and the courts (infringement and cancellation actions).
  • Advising the business, as well as our non-IP legal colleagues working on the same projects on our business' day-to-day trademark, design and copyright queries - including the IP clauses of agreements.
  • Supporting the business and our non-IP legal colleagues in relation to other IP related projects, such as licenses and assignments, trademark portfolio audits, copyright and domain name matters.
  • Providing IP compliance training to market lawyers and marketing teams.
  • Assessing risks posed in relation to GenerativeAI project proposals from an IP perspective, advising the business, drafting relevant use guidelines and training materials, and providing training in relation to specific GenerativeAI platforms, or types of projects.

Required skills and experience:

  • Qualification as a UK solicitor or trademark attorney, or as an international lawyer with equivalent qualifications.
  • Experience in trademark portfolio management and prosecution, including search opinions and trademark prosecution.
  • Experience in advising on trademark, copyright and designs matters, including enforcement/complex contentious matters.
  • Confidence in providing complex legal opinions and risk analysis, including trademark infringement assessments.
  • Excellent written and oral communication skills.
  • Excellent English language, interpersonal and business counselling skills.
  • The ability to think critically and work independently to a high degree.