Assistant Counsel Trade Marks

Job description

Country: United Kingdom
Location: London
Function: Legal & External Affairs
Level: Experienced Professional
Appointment Type: Permanent

 

“UK employees who are at risk of redundancy, and who meet the criteria for this role, will be given preference over employees who are not at risk of redundancy [and external applicants].”

 

Brands are British American Tobacco’s most important assets.  The company has one of the largest trade mark portfolios in the world (85,000), the management of which is vested in BATMARK.  In addition to protecting the brands through trade marks and other IP rights, BATMARK also maximizes the value of the asset base through (a) inter-company and third-party royalty-bearing agreements, (b) agreements with competitors, (c) settlements with infringers and (d) other agreements.
BATMARK’s responsibilities cover the clearance, protection, enforcement, exploitation and transfer of intellectual property rights.  Each Assistant Counsel / Trade Mark Manager is responsible for all day to day soft IP issues relating to the Group’s regional and local brands in the BAT Regions to which they are assigned and all brands for any business units to which they are assigned.  In addition, they are responsible for all soft IP issues relating to any contractual arrangements or M&A projects to which they are assigned and for any other projects or processes to which they are assigned.

The  Assistant Counsel / Trade Mark Manager, under the supervision of, and supporting, BATMARK management, will 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; and
·  fully utilizes the expertise and resource available in the BATMARK team to the benefit of IP owners and the end market businesses within the BAT Group.

 
Principal Accountabilities

·  Primary responsibility for day to day soft IP issues in specific Regions/Business units, and for any other projects or processes to which they are assigned, including M&A projects, in collaboration with SeniorBATMARK Management:
·  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 licenses, assignments, co-existence 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 Centers and operating companies.  
·  Build close working relationships with the IP Assistant 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 organizations 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

 

Functional Competencies

·  Qualified as a lawyer or trade mark attorney (or actively working towards it), 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, licenses, assignments, co-existence agreements with excellent attention to detail and accuracy.
·  Good understanding of how to advise the business on delivering results whilst managing legal risk
·  Good interpersonal skills including an ability to engage, translate compBATMark strategies into easily understandable terms and to communicate these in a clear and coherent manner both orally and in writing to all levels of management.
·  Ability to prioritise workload and work flow for self and a team (without directly line managing the team(s)) and keep to tight deadlines within a pressurized environment with minimal supervision.
·  Ability to delegate efficiently as appropriate to IP Assistants and supervise them in their daily work
·  Considerable attention to detail, accuracy and follow-up
·  High degree of self-motivation and the ability to achieve defined and measurable results.
·  Ability to contribute to effective teamwork
·  Ability to deal with problems alone and/or support team members to deal with problems themselves but know when to seek advice on important or legally complex issues.
·  Ability to drive process efficiencies for self and wider IP team
·  Creativity in resolving issues.

 

British American Tobacco is one of the world’s leading multinational companies, with brands sold in over 200 markets, made in 44 factories in 42 countries.

We are proud that we are consistently among the top 5 companies on the London Stock Exchange.

Our portfolio includes our world-famous Global Drive Brands – Dunhill, Kent, Lucky Strike, Pall Mall and Rothmans – along with many other leading international brands, such as Vogue, Peter Stuyvesant and State Express 555.

Alongside our traditional tobacco business, we are also developing products that offer consumers potentially less risky alternatives to regular cigarettes. Our Next Generation Products are already leading the way in the Industry of vapour and tobacco heating devices. We continue to develop a solid portfolio of consumer solutions which already include well known global brands like Vype, glo and Voke.

Contractual Legal Entity: BAT (Holdings) Ltd (GB70)