Assistant Trade Mark Counsel - London, United Kingdom - British American Tobacco

British American Tobacco

Verified Company

London, United Kingdom

3 weeks ago

Posted by:

Tom O´Connor

beBee Recruiter

Description

BAT is evolving at pace - truly like no other organisation.

To achieve the ambition, we have set for ourselves, we are looking for colleagues who are ready to live our ethos every day. Come be a part of this journey

BAT IS LOOKING FOR An Assistant Trade Mark Counsel

FUNCTION:
Legal & External Affairs

LOCATION:
London, UK

TYPE OF CONTRACT:
Permanent

ROLE POSITIONING AND OBJECTIVES
Acting as Assistant Counsel under the supervision of, and supporting, BATMark management, contribute to and execute relevant aspects of BATMark's global IP activity in a manner which:

provides a value added service to central management functions and relevant business units;

- delivers solution-orientated advice and management on all aspects of trade mark related work, including clearance, protection, disputes, trade mark related contracts and corporate support (including M&A);
- manages costs including, but not limited to, reducing reliance on outside vendors as appropriate;
- ensures the Group's ability to exploit its brands against competitors;
- fully utilises the expertise and resource available in the BATMark team to the benefit of IP owners and the end market businesses within the BAT Group.

Reports to:
Trade Mark & Marketing Counsel

Number of direct reports:
None, but does have indirect management of one IP Assistant

Geographic Scope:
Global

WHAT YOU WILL BE ACCOUNTABLE FOR

Manage all activity through appropriate use of internal resource and external counsel
Selection and clearance of trade marks and reporting to business
Prosecution of trade mark registrations and renewals
Initiating and defending oppositions and cancellations and progressing them to conclusion
Handling and advising on copyright and design issues
Domain name registration, renewal and recovery
Management of assigned global processes e.g. renewals or vulnerability
Secure optimum performance from outside advisers and agents, building up good working relationships and constantly supervising the quality of their work, and ensuring that the work done is timely and cost effective.
Review, draft and advise on a range of IP related agreements (including licences, assignments, coexistence agreements), both internally within the BAT group of companies and with third parties as required.
Focus on building close working relationships with regional brand groups and all relevant functions in Regional Centres and operating companies.
Build close working relationships with the IP Assistants in the relevant team to articulate needs and ensure effective and timely execution of their work
Supervising IP Assistants in their work, in particular reviewing and approving launch plans (including eGraphics) from a trade mark perspective in a timely fashion
Monitor and manage BATMark 's controllable operating costs including advising Regions on appropriate trade mark budgets and spend
Keep relevant BATMark senior management informed of potential or existing problems.
Ensuring that Group companies, Regional teams, international brand owners and external legal associates meet all the Group's business requirements in relation to IP rights.
Keep abreast of worldwide developments in Intellectual Property Law and advise BATMark teams of relevant developments
Monitor relevant international competitor activity and make recommendations to Senior BATMark management of action required, if any
External engagement representing BAT in trade mark or industry organisations as requested by Senior BATMark management
Provide assistance and IP related recommendations to the end markets and AIT team to help combat smuggling and counterfeit products

ESSENTIAL EXPERIENCE, SKILLS AND KNOWLEDGE

Qualified as a lawyer or trade mark attorney, with experience in international trade mark and intellectual property law, including Court and registry conflicts, licensing, clearance and protection.
Detailed and practical working knowledge of IP laws including trade mark, copyright, competition, contract, commercial and data protection with aspiration to improve such knowledge
Good understanding of the principles of evidence
Good skills in the analysis and interpretation of complex legal documents in particular, agreements witness statements and pleadings.
Good drafting skills for commercial agreements, licences, assignments, coexistence agreements with excellent attention to detail and accuracy.
Good commercial judgement and clear understanding of BAT business (organisational and operational) and markets with ability to understand and support the strategic aims of the business.
Good understanding of how to advise the business on delivering results whilst managing legal risk
Understands the LEX function in order to execute effective activities
Good interpersonal skills including an ability to engage, translate complex strategies into easily understandable terms and to communicate these in a clea