Trademark Counsel
Job Description Summary
The IP Counsel Trademarks will be responsible for managing the company’s global trademark portfolio, ensuring that company’s intellectual property (IP) assets are protected, and supporting the business in its efforts to create, maintain, and enforce a strong trademark strategy. This role involves advising on all aspects of trademark law, as well as related topics (e.g. domain names), across multiple jurisdictions. The IP Counsel Trademarks will work closely with internal stakeholders and external partners to safeguard the company's global brand identity and reputation
Key Responsibilities
1. Trademark Portfolio Management
- Oversee the global trademark portfolio, including new filings, renewals, oppositions, and assignments.
- Manage and collaborate with external trademark agents and law firms in various jurisdictions to ensure proper management and prosecution of trademarks.
- Provide strategic advice on the expansion and protection of the company’s trademarks in new markets.
2. Trademark Strategy & Risk Management
- Develop and implement the company’s global trademark strategy for the corporate brand as well as for product brands in Segments in alignment with business goals.
- Conduct trademark clearance searches and advise on the registrability of new marks, including assessing risks and opportunities.
- Assess and manage trademark-related risks, including third-party claims, potential infringements, and dilution concerns.
3. Trademark Enforcement & Litigation
- Lead the enforcement of trademark rights, including the monitoring of third-party use and taking appropriate legal action to protect trademarks from infringement or misuse.
- Work with external counsel to manage trademark disputes, including administrative and judicial proceedings before intellectual property offices and courts.
- Provide guidance and support in the context of cease-and-desist letters, oppositions, cancellations, and settlements.
4. Licensing & Commercial Agreements
- Draft and negotiate trademark-related agreements, including trademark license agreements, co-existence agreements, and distribution agreements in cooperation with the IP Counsel – Contracts in the IP team, as well as in cooperation with the Legal Department.
- Provide trademark related legal support to business teams on branding and trademark-related aspects of product development, marketing, and distribution.
5. Collaboration with Internal Stakeholders
- Partner with marketing and business development teams to ensure that branding strategies, and trademark usage are aligned with legal standards and corporate objectives.
- Provide training to internal teams on trademark law, best practices, and proper usage of trademarks.
- Align branding strategy with the Corporate Tax team and collaborate on setting up and maintaining an appropriate intercompany license framework.
6. Monitoring & Reporting
- Conduct regular monitoring of global trademark portfolio and report on status, potential issues, and actions to be taken.
- Stay abreast of changes in trademark law and practice in key jurisdictions, particularly in light of global developments and regulatory changes.
7. Global Coordination & Cross-functional Collaboration
- Coordinate with regional and local stakeholders in the organization to ensure consistency and compliance in trademark matters across various jurisdictions.
- Provide strategic advice on global trademark filings and localization of trademarks for specific markets.
Required Qualifications
Education
- Law degree from a recognized institution in a relevant jurisdiction.
- Specialization in Intellectual Property law (particularly trademark law) or a related field is highly desirable.
Experience
- Minimum 5 years experience in trademark law, ideally gained in a multinational corporation, law firm, or an IP-focused boutique firm.
- Strong experience with the management and prosecution of a global trademark portfolio, including experience in working with multiple jurisdictions (including EU, US, APAC).
- Proven track record of managing trademark disputes, including litigation and opposition proceedings.
- Knowledge of trademark licensing and transactional work.
Skills
- In-depth knowledge of global trademark laws and procedures.
- Ability to provide strategic, business-oriented advice while mitigating legal risk.
- Experience with trademark database management tools and monitoring platforms.
- Acumen to select and direct outside counsel in the trademark field and effectively manage service provider relationships for optimal cost and quality.
- Strong negotiation skills, ability to manage complex projects and working efficiently under pressure.
Languages
Fluency in English and good command of local language is required. Proficiency in other languages (e.g. French, Spanish, Chinese) would be an asset.
Working Conditions
- The position is full-time (80-100%), permanent, and reports to the Head of Intellectual Property
- The position is based in Switzerland, with the opportunity for remote work, subject to company policy.
- Occasional international travel may be required for coordination with external counsels, regional teams, and for attending legal proceedings or IP events.
Contact
Talent Management Partner, Simone Michelotti
Mail: jobs.ch@omya.com
Tel.: +41 62 789 25 27