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To ensure the optimum protection and enforcement of company Intellectual Property and Brands throughout the world. To clear and register trade marks and domain names and to protect those brands against infringements.
Identification of illegal product, investigating targets, and the implementing of suitable territory/country enforcement programmes within budgetary constraints.
Arranging for the provision of necessary documentary support for actions, including Powers of Attorney and Witness statements.
A qualified lawyer or trade mark agent with a minimum 1-3 years PQE gained in private practice or in-house.
Experience of clearing names for use and registration as trade marks
Experience of IP enforcement and in managing litigation
Understanding of the criminal and civil law relating to IP
Knowledge of enforcement organisations and bodies, and their procedures
A knowledge of online piracy issues and familiarity with the technology would be beneficial
Good research and assessment skills
Good communication skills, both written and verbal
Good commercial experience
Ability to work as part of a team
Political awareness and ability to manage stakeholders’ differing commercial objectives
Brand Protection Lawyer job description
Developing and implementing an IPR protection strategy for the key brands of the business, by working closely with the business areas to understand their business strategy.
Advising the business on IP issues, including registrability of trade marks and existence of conflicting rights, and assisting them in assessing risk.
Co-ordinating the clearance and registration of trade marks, designs and domain names across the company to ensure the efficient and cost-effective protection of IPR.
Liasing with the business areas in order to deal with specification issues, gather evidence in support of trade mark applications and oppositions, and to determine renewal requirements.
Liaising with the business areas to determine domain name registration requirements on the launch of new urls. Advising businesses of the procedure and cost, and gathering necessary evidence to support sunrise and landrush applications.
Policing infringements of IPR and co-ordinating appropriate legal action in conjunction with Legal and other members of the Legal & Business Affairs team. Increasingly, this includes online infringements, including offering downloads, and peer to peer activity.
Appointing legal counsel, local lawyers, investigators and working with local government agencies to conduct IPR enforcement action.