Counsel Trademarks, Copyright & Design
Be a part of a ground-breaking change!
Times are changing at Philip Morris International (PMI). We’ve chosen to do something incredible. The world expects us to act responsibly. We are doing just that by redefining our business and building our future on one clear purpose – to deliver a smoke-free future.
This transformation will redefine every area of our business: the products we sell, where we sell them, and how they’re manufactured and delivered. The way we talk to our customers and engage with society.
With huge change, comes huge opportunity. So, you’ll enjoy dreaming up and delivering better, brighter solutions and the space to move your career forward in endlessly different directions.
Join our legal team in the Philip Morris London office as a Counsel within the Digital & Technology law team providing guidance and specialist subject matter legal support primarily to PMI’s Global Information Technology (IT) and Global IT Procurement function.
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 on a permanent basis.
The opportunity
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 implement 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.
You will report to a Senior Counsel within the TCD team, and will work on trademark, copyright and design matters concerning the European Region, our Wellness/Healthcare portfolio, and GenerativeAI matters. You will work with both legal and business colleagues at PMI, 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. Intellectual property experience in the fields of Wellness/Healthcare and GenerativeAI would therefore be advantageous.
Specific responsibilities include:
- Working closely with internal clients in our European markets and the Wellness/Healthcare team, 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: handling and prosecuting our trademark portfolio in the European region, and in relation to Wellness/Healthcare marks – including handling significant registry objections such as non-distinctiveness and relative grounds objections.
- Actively running disputes in the European Region, and in relation to Wellness/Healthcare marks: contentious matters before trademark registries (active and passive oppositions and cancellations) and the courts (infringement and cancellation actions).
- Advising the business in the European region and the Wellness/Healthcare team, as well as our non-IP legal colleagues working on the same projects on our business’ day-to-day trademark, design and copyright queries – including the IP clauses of agreements.
- Supporting the European markets, the Wellness/Healthcare business and our non-IP 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 handling matters in Europe, and those relating to Wellness/Healthcare.
- Assessing risks posed in relation to GenerativeAI project proposals from an IP perspective, advising the business, drafting relevant use guidelines and training materials, presenting such guidelines to our GenerativeAI Steering Committee for approval, and providing training in relation to specific GenerativeAI platforms, or types of projects.
Required skills and experience:
- 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 and trademark prosecution.
- Experience in 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 and oral communication skills.
- Excellent English language, interpersonal and business counselling skills.
- The ability to think critically and work independently to a high degree.
What’s in it for you?
There are many IT Organizations out there, so why should you join ours?
We believe PMI IT’s true strength is fuelled by our people, and that our success depends on them coming to work every single day with a sense of purpose and an appetite for progress. We are a people first organisation committed to providing you with first-class employee journey. Here’s a glimpse of what’s in it for you upon joining us:
- Work-life balance: Wellbeing comes first. We offer a fantastic office environment and hybrid working options to ensure you have the best work-life balance possible.
- Learning & Development: Your growth is a priority. Our robust and varied learning & development ecosystem will help you strengthen your technical skills and enhance your soft skills and intuition for business. The capabilities you will acquire with us will support your life-time employability within IT, PMI, and beyond.
- Inclusion & Diversity: Our differences - much more than our similarities - generate the innovation we are looking for. We aspire to build a diverse and inclusive organization to access the breadth and depth of thinking and sensitivity necessary to thrive.
Every single IT colleague is part of our Transformation journey. Join us and pursue your ambitions – our staggering size and scale provides endless opportunities to progress. If this offer resonates with you, we look forward to receiving your application and getting to know you.
Together, let’s deliver a smoke free future.