Trademark Counsel

vor 3 Wochen


Egerkingen, Schweiz Omya (Schweiz) AG Vollzeit

Trademark Counsel Description Job Description SummaryThe IP Counsel Trademarks will be responsible for managing thecompany’s global trademark portfolio, ensuring that company’sintellectual property (IP) assets are protected, and supporting thebusiness in its efforts to create, maintain, and enforce a strongtrademark strategy. This role involves advising on all aspects oftrademark law, as well as related topics (e.g. domain names),across multiple jurisdictions. The IP Counsel Trademarks will workclosely with internal stakeholders and external partners tosafeguard the company's global brand identity and reputation KeyResponsibilities 1. Trademark Portfolio Management - Oversee theglobal trademark portfolio, including new filings, renewals,oppositions, and assignments. - Manage and collaborate withexternal trademark agents and law firms in various jurisdictions toensure proper management and prosecution of trademarks. - Providestrategic advice on the expansion and protection of the company’strademarks in new markets. 2. Trademark Strategy & RiskManagement - Develop and implement the company’s global trademarkstrategy for the corporate brand as well as for product brands inSegments in alignment with business goals. - Conduct trademarkclearance searches and advise on the registrability of new marks,including assessing risks and opportunities. - Assess and managetrademark-related risks, including third-party claims, potentialinfringements, and dilution concerns. 3. Trademark Enforcement& Litigation - Lead the enforcement of trademark rights,including the monitoring of third-party use and taking appropriatelegal action to protect trademarks from infringement or misuse. -Work with external counsel to manage trademark disputes, includingadministrative and judicial proceedings before intellectualproperty offices and courts. - Provide guidance and support in thecontext of cease-and-desist letters, oppositions, cancellations,and settlements. 4. Licensing & Commercial Agreements - Draftand negotiate trademark-related agreements, including trademarklicense agreements, co-existence agreements, and distributionagreements in cooperation with the IP Counsel – Contracts in the IPteam, as well as in cooperation with the Legal Department. -Provide trademark related legal support to business teams onbranding and trademark-related aspects of product development,marketing, and distribution. 5. Collaboration with InternalStakeholders - Partner with marketing and business developmentteams to ensure that branding strategies, and trademark usage arealigned with legal standards and corporate objectives. - Providetraining to internal teams on trademark law, best practices, andproper usage of trademarks. - Align branding strategy with theCorporate Tax team and collaborate on setting up and maintaining anappropriate intercompany license framework. 6. Monitoring &Reporting - Conduct regular monitoring of global trademarkportfolio and report on status, potential issues, and actions to betaken. - Stay abreast of changes in trademark law and practice inkey jurisdictions, particularly in light of global developments andregulatory changes. 7. Global Coordination & Cross-functionalCollaboration - Coordinate with regional and local stakeholders inthe organization to ensure consistency and compliance in trademarkmatters across various jurisdictions. - Provide strategic advice onglobal trademark filings and localization of trademarks forspecific markets. Required Qualifications Education - Law degreefrom a recognized institution in a relevant jurisdiction. -Specialization in Intellectual Property law (particularly trademarklaw) or a related field is highly desirable. Experience - Minimum 5years experience in trademark law, ideally gained in amultinational corporation, law firm, or an IP-focused boutiquefirm. - Strong experience with the management and prosecution of aglobal trademark portfolio, including experience in working withmultiple jurisdictions (including EU, US, APAC). - Proven trackrecord of managing trademark disputes, including litigation andopposition proceedings. - Knowledge of trademark licensing andtransactional work. Skills - In-depth knowledge of global trademarklaws and procedures. - Ability to provide strategic,business-oriented advice while mitigating legal risk. - Experiencewith trademark database management tools and monitoring platforms.- Acumen to select and direct outside counsel in the trademarkfield and effectively manage service provider relationships foroptimal cost and quality. - Strong negotiation skills, ability tomanage complex projects and working efficiently under pressure.Languages Fluency in English and good command of local language isrequired. Proficiency in other languages (e.g. French, Spanish,Chinese) would be an asset. Working Conditions - The position isfull-time (80-100%), permanent, and reports to the Head ofIntellectual Property - The position is based in Switzerland, withthe opportunity for remote work, subject to company policy. -Occasional international travel may be required for coordinationwith external counsels, regional teams, and for attending legalproceedings or IP events. Contact Talent Management Partner, SimoneMichelotti Mail: jobs.ch@omya.com Tel.: +41 62 789 25 27 ApplyNow


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