Counsel – Trademarks, Copyright and Designs

Greater London
Contract/temp
Posted
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Philip Morris International UK
FMCG & consumer goods
501-1,000 employees
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London, UK

12 Month Fixed Term Contract

Be a part of a revolutionary change. At Philip Morris International (PMI), 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 1 year contract.

ABOUT THE ROLE

PMI’s 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.

Primarily, you will report to the Senior Counsel for the Europe Region within the TCD team. You will work with our European legal and business colleagues, 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.

YOUR ‘DAY TO DAY’

  • 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 and logos - including conducting online searches and reviewing and reporting full availability searches.

  • Trademark portfolio management: managing and prosecuting our trademark portfolio – including handling significant registry objections such as non-distinctiveness and relative grounds objections.

  • Actively running disputes: contentious matters before trademark registries (active and passive oppositions and cancellations) and the courts (infringement and cancellation actions).

  • Advising the business and our legal colleagues on our business’ day-to-day trademark, design and copyright queries – including the IP clauses of agreements.

  • Supporting the business and our legal colleagues in relation to other IP related projects, such as licenses and assignments, trademark portfolio audits, copyright and domain name matters.

  • Providing IP compliance training to market lawyers and marketing teams.

WHO WE’RE LOOKING FOR

  • Qualification as a UK solicitor or trademark attorney, or as an international lawyer with equivalent qualifications.

  • Experience in trademark portfolio management and prosecution, including search opinions, trademark prosecution.

  • Experience of advising on trademark, copyright and designs matters, including enforcement / complex contentious matters.

  • Confidence in providing complex legal opinions and risk analysis, including trademark infringement assessments.

  • Excellent written communication skills.

  • Excellent English language, interpersonal and business counselling skills

WHY WORK FOR US

Our success depends on the men and women who come to work every single day with a sense of purpose and an appetite for progress!

  • We’re international: Our global workforce of more than 82,000 is one of our greatest strengths and our employees speak more than 80 languages
  • We’re flexible: your work fits you and not the other way round, thanks to our Flexible Work Arrangement Program; and
  • We’re a certified top employer: This position will advance your experience with innovative technologies, services, and processes. Backed by an attractive salary and compensation package, you will work in a professional setting with clients and team members from all over the world. We are the first multinational Swiss company to obtain the Equal-Salary label, for men and women.

Pursue your ambitions and develop your skills with a global business – our staggering size and scale provides endless opportunities to progress.

Take pride in delivering our promise to society: to deliver a smoke-free future.

Philip Morris International: Building a Smoke-Free Future
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 and its shareholders. 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. PMI is building a future on a new category of smoke-free products that, while not risk-free, are a much better choice than continuing to smoke. Through multidisciplinary capabilities in product development, state-of-the-art facilities and scientific substantiation, PMI aims to ensure that its smoke-free products meet adult consumer preferences and rigorous regulatory requirements. PMI’s smoke-free IQOS product portfolio includes heated tobacco, nicotine-containing vapor products and nicotine pouches. As of the end of December 2023, PMI’s smoke free portfolio had 33 million users and was available in 84 markets. For more information, see our PMI and PMI Science websites.

PMI is an Equal Opportunity Employer.

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