Senior Counsel Trademarks, Copyrights and Designs

Senior Counsel Trademarks, Copyrights and Designs

Location: London/England

Employment type: Full-Time

Job Description

Req#: 71505 PMI Vision

It’s Time to Unsmoke. There is no question that the best choice for men and women who smoke is to quit cigarettes and nicotine altogether. But many people don’t. In any given year, about 9 out of 10 men and women who are already smoking will continue: those people deserve access to, and information about, better alternatives. That is why we’re building PMI’s future on smoke-free products and focusing our efforts in switching adults, who choose to continue smoking, to our smoke-free products.

In order to achieve this, we are focused on 6 strategic priorities:

1. Developing a long-term product and ecosystem portfolio
2. Building societal support of smoke-free products
3. Growing our smoke-free product categories to scale
4. Delivering product launch & customer service agility
5. Achieving cost and cash leadership
6. Maintaining leadership in conventional cigarettes

About Our Vision: We’ve built the world’s most successful cigarette company, with the world’s most popular and iconic brands. Now we’ve made a dramatic decision. We will be far more than a leading cigarette company. We’re building PMI’s future on smoke-free products that are a much better choice than cigarette smoking.

Role Summary

Purpose: Senior Attorney within the Trademark, Copyright and Designs team of the PMI Law Department who will be effective in exercising seasoned judgment to provide actionable, clear, and concise advice and guidance to the business and functional leaders across the company. Leading teams and projects including day-to-day advice to the company and its business professionals on a range of Trademark, Copyright, and Design matters. Ensures that strategy, policy, and practices are properly established, reviewed, and executed.

Key Competencies

• Strong legal competence in the field of trademarks, designs, and copyrights, with emphasis on trademark searches, filing, prosecution, oppositions, and enforcement
• Litigation and/or transactional experience is a plus
• Excellent analytical and legal drafting skills
• Able to deploy creative thinking to achieve business objectives, while ensuring legal compliance
• Clarity in both written and verbal communication
• Willingness to proactively connect and support business clients
• Ability to manage people and organize workloads within a team, efficiently and in a time sensitive manner
• Understanding of how a multinational company operates would be an advantage

Responsibilities

• Oversight and management of a small team of counsel, and other staff responsible for providing timely Trademark, Copyright and Design advice to internal business and legal colleagues.
• Partner with internal clients to create proactive strategies designed to avoid or minimize exposure to legal liability and help business partners understand the risks and consequences of commercial activities including providing trademark and design freedom to use/operate advice.
• Effectively communicates the consequences and develops alternatives to manage identified risks.
• Devising and implementing trademark filing programs in line with PMI’s global strategy.
• Supervision of counsel and legal analyst responsible for prosecuting trademarks.
• Enforcing PMI’s rights including trademark oppositions and cancellations, letters before actions, trademark and design infringements, customs seizures, copyright infringement, UDRPs and domain name disputes.
• Identifies and analyzes legal issues, drafts key documents, presents clear recommendations, and ensures legal compliance as it relates to Trademark, Copyright and Designs.
• Represents the company’s position before federal, state, and local government agencies regarding Trademark, Copyright and Designs.
• Delivers expert legal counsel on Trademark, Copyright and Design matters.
• Works to ensure compliance with applicable local and country legislation.
• Assists and consults with various stakeholders.
• Acts as a team player and role model for the Trademark, Copyright, and Design function, encouraging collaboration and standards of excellence.
• Stays current with legal developments, best practices, and benchmarks in relation to Trademark, Copyright and Design matters and assists internal clients in implementing policies and procedures in response thereto.

Requirements

• Qualified trademark attorney and/or solicitor or equivalent.
• Focused experience which demonstrates an in-depth knowledge and applied understanding of area of expertise; both in house and major law firm experience preferred.
• Previous managerial and leadership experience preferred.
• Ability to oversee complex projects and lead them to successful completion in an organized, efficient, and effective manner.
• Ability to lead and work in a multi-disciplinary setting to achieve consensus.

PMI is an Equal Opportunity Employer PMI Global Services Inc. and PM Global Brands Inc. are a subsidiary of Philip Morris International Inc. PMI is leading a transformation in the tobacco industry to create a smoke-free future and ultimately replace cigarettes with smoke-free products to the benefit of adults who would otherwise continue to smoke, society, the company, its shareholders and its other stakeholders.

About the company

Philip Morris International (PMI) is a leading international tobacco company engaged in the manufacture and sale of cigarettes, smoke-free products and associated electronic devices and accessories, and other nicotine-containing products in markets outside the U.S.