Experis IT

Solicitor - Trademarks, Copyright and Designs
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📅 Date Posted

Feb 04, 2025

💼 Job Type

CONTRACTOR

💵 Rate

Unknown

Description

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 logos - including conducting online searches reviewing reporting full availability searches.
- Trademark portfolio management: managing prosecuting our trademark portfolio - including handling significant registry objections such as non-distinctiveness relative grounds objections.
- Actively running disputes: contentious matters before trademark registries (active passive oppositions cancellations) courts (infringement cancellation actions).
- Advising the business as well as non-IP legal colleagues working on same projects on day-to-day trademark design copyright queries - including IP clauses agreements.
- Supporting business non-IP legal colleagues relation other IP related projects such licenses assignments trademark portfolio audits copyright domain name matters.
- Providing IP compliance training market lawyers marketing teams.
- Assessing risks posed relation GenerativeAI project proposals from an IP perspective advising business drafting relevant use guidelines training materials providing training relation specific GenerativeAI platforms types projects.

Required skills & experience:
- Qualification as UK solicitor or trademark attorney or international lawyer equivalent qualifications.
- Experience in trademark portfolio management prosecution including search opinions prosecution.
- Experience advising on trademark copyright designs matters enforcement/complex contentious matters.
- Confidence providing complex legal opinions risk analysis including infringement assessments.
- Excellent written oral communication skills.
- Excellent English language interpersonal business counselling skills.
- Ability think critically work independently high degree.

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