Trademarks Attorney - Italfarmaco España
14 days ago
Alcobendas
ACCOUNTABILITIES: • Oversee and manage ITF S.A (Spain) and Effik S.A (France) trademark portfolios in collaboration with the global IP team., • Manage trademarks and designs filing, prosecution and maintenance actions in coordination with outside counsels. Review office actions and provide appropriate response strategies to internal business clients., • Perform, review and analyse trademark clearance search investigations and provide legal opinions, business risk analysis and advice to internal business and marketing clients for development and implementation of new products and services., • Review trademark watch notices and provide legal advice and recommendations on appropriate actions., • Monitor, investigate and provide strategic legal advice and support to internal business and local /global marketing clients on trademark infringement and online brand abuse. Coordinate with internal business and marketing teams on appropriate response strategies and actions., • Provide support on strategic brand and legal advice and due diligence to internal business and marketing teams on acquisitions, divestitures, and brand migrations., • Participate in the creation and drafting of global trademark policies and procedures. Collaborate in defining and implementing brand and trademark usage best practices and guidelines in coordination with the Global IP team. REGULATORY AND ORGANISATIONAL REQUIREMENTS • Compliance with internal policies and corporate procedures., • High sensitivity to confidentiality., • Adherence to applicable trademarks regulations., • Close collaboration with Marketing, Legal and Regulatory teams and external IP counsels. COMPLEXITY AND IMPACT OF THE POSITION • The role requires attention to detail, very good communication skills and the ability to manage several complex and highly sensitive subjects simultaneously., • The trademark attorney operates in a cross-functional environment, supporting strategic brand protection activities, trademark enforcement actions, infringement risk analysis and due diligence operations., • The position contributes directly to the growth, protection, and enforcement of the company’s core trademarks assets. EXPERTISE • Minimum of 4 years of experience in a professional IP environment, gained either in industry and/or in a European IP firm, ideally as in-house trademark attorney in an international pharmaceutical or healthcare or company., • Broad range of experience across all areas of trademark attorney work including trademarks portfolio management, trademarks surveillance and enforcement actions, contract negotiation and due diligence activities., • Experience in the management of international trademarks portfolio., • Proven track record in structuration, development and implementation of global trademarks procedures and policies., • Direct exposure to trademark litigation matters both administrative (opposition, revocation) and legal (infringement and unfair competition), • Good knowlege of trademark search tools (Compumark, Fovea IP...), • Experience in the management of international Domain Names portfolio would be a plus. QUALIFICATIONS • Master’s degree in Intellectual Property Law., • Post-master graduation in Trademark law (CEIPI, Queen Mary’s University, etc…) preferred., • Ability to file and prosecute trademarks before the EUIPO., • Excellent written and oral skills in English., • Good command of Spanish. French or Italian would be a plus. SOFT SKILLS • Strong organizational skills., • Adaptability., • Accuracy., • Good team spirit and ability to work in a multicultural environment.
