Intellectual Property Counsel
City of London (Greater London) Legal
Job description
Competitive Salary + Bonus + Pension + Private Healthcare + Share Plans + Free Onsite Gym + Subsidised Shop & Canteen + Flexible & Agile Working.
Company Overview
Are you interested in brands, passionate about IP, a people person, a problem solver and looking for a new challenge? If so, then look no further! We are recruiting for a new Brand IP Counsel across our Home Care and Beauty & Personal Care Division.
Unilever is one of the world's leading fast-moving consumer goods companies. Our products are sold in over 190 countries and, on any given day, 2 billion consumers worldwide use them. We own some of the best known and best loved brands, from long-established names like Dove, Persil, Lipton and Ben & Jerry's to new innovations such as Blueair, our innovative in-home air purifier. Our Prestige brands include Ren, Dermalogica and Living Proof.
The role of the Legal Group is to protect Unilever and help it to win by providing objective advice and creative legal solutions.
Summary
Brand IP is a centralised function at Unilever. The team is based in London and Rotterdam and has global responsibility for all Brand IP work. The Brand IP function is a key enabler to product launches and marketing campaigns. As a brand led company, the number of innovations is fast and exciting!
The Global Brand IP Counsel provides specialised legal intellectual property advice, risk management support and creative legal solutions to the global business, with a focus on trade mark and copyright law, including searching, clearance, filing, renewals, infringement, look-a-like products, unfair competition and passing-off, licensing, assignments, mergers and acquisitions as well as domain name registrations, recoveries and acquisitions.
The Global Brand IP Counsel is expected to provide appropriate strategic input to maximise the value of Unilever's IP and add value by developing the IP awareness, knowledge and expertise of the business. The role reports to the Global Head of Brand IP.
In this role, you will lead and take ownership for decisions around IP, advising on all aspects of clearance and protection, risk and strateg and pro-actively managing cross-functional business partners to enable the successful launch of new brands. This role will encompass the full spectrum of global trade mark portfolio management and you will work closely with local countries to evaluate and assess risk. Business partnering and stakeholder management are key requirements of this role.
Key Responsibilities:
Global trade mark portfolio management including:
· Clearance: develop strategies and conduct and advise on all aspects of TM clearance using a combination of tools (Corsearch, TM Now) and external legal support on a global basis;
· Protection and maintenance: work with the business and local countries to build strategies for what TMs to protect and where, considering ownership structures to deliver optimal protection; dealing with all aspects of prosecution and evidence requirements, including for renewals.
· Watching: using external tools (Corsearch) analyse and devise offensive and defensive strategies to ensure Unilever assets are appropriately monitored and protected.
· Work closely with the legal team on other IP areas such as licensing, copyright issues, designs, patents, usage rights.
· Draft and negotiate assignments, licence agreements and other contracts in relation to Unilever and third-party IP.
Enforcement:
Lead all administrative TM work such as oppositions, cancellations and invalidity actions;
· Work closely with in-country lawyers on any relevant copyright and TM infringement, unfair competition and passing off ensuring on-going feedback to the business to ensure business goals and expectations are managed;
· Manage and maintain accurate data for all contentious disputes.
· Oversee the preparation of necessary official and evidentiary documents.
· Draft pre-action letters, supervise and give strategic input into the preparation of submissions, witness statements, pleadings and evidence for global TM disputes by external counsel.
· Attend meetings and negotiate with third parties to resolve TM, domain names or copyright disputes.
· Advise on TM related domain name issues and recoveries, including dispute resolution actions before WIPO or other appointed arbitrators, identify infringements from any internet monitoring service and decide on appropriate strategy in respect of other forms of infringement, including unfair competition and passing off.
Person Specification
· Qualified TM Attorney with minimum 5+ PQE.
· Proven track record in international TM portfolio management, preferably within an FMCG
· Self-starter, curious with strong attention to detail.
· Ability to provide advice in plain non-legal jargon.
· Strong organisational and prioritisation skills to cope with multiple stakeholders, competing deadlines and priorities, often at very short notice.
· Experience of using and interrogating data from TM database systems and searching tools is essential.
· Creativity in problem solving.
· Team player.
· Self-confident integrity – ability to objectively judge risk and when to counsel or influence business.
· Excellent project management skills and strong understanding of stakeholder management.
· Experience of working in-house within a global matrix organisation preferable.
· Proficient in Microsoft Word, Excel, PowerPoint.
Business Skills
· Full accountability of budget management, including advocating for budget allocation where appropriate.
· Champion Brand IP within the business, communicating the value added by the internal Brand IP function and advocating for changes in business behaviour where needed.
· Work as a team across Brand IP to leverage and drive best practice.
· Operate as a leader within the Brand IP team. Mentor, develop and supervise other team members.
Legal Team, Business and External Advocacy
· Spot wider legal issues e.g. competition risk, design rights, marketing and advertising law.
· Pro-active involvement in team meetings including regular presentations and education of team members on relevant issues.
· Input and participate in wider team discussions to ensure optimum delivery of external vendors to ensure systems and processes meet evolving business needs.
· Educate the business on IP issues and policy.
· Contribute to the population of know how portal with material of value to the wider legal network.
· Contribute to external lobbying bodies activities on issues of strategic importance to Unilever's IP portfolio.
· Provide IP advice in relation to licensing opportunities and M&A.
· Work closely with Patent Attorneys and Design Counsels, and wider legal team on all areas of product launch.
APPLICATION PROCESS
Online Application >> Face to Face Interview/s >> Job Offer
Please note: As part of the job application, you will be asked to complete a brief online application form. Completion of the form is required in order to be considered. Please allow yourself enough time to complete the application form as when filled out partially or not at all it may adversely affect the progress of your application. Please be aware that you will have to complete the form at once as you will be unable to return to it later.