Senior Intellectual Property Counsel

Senior Intellectual Property Counsel

Senior Intellectual Property Counsel

Job Overview

Croydon, England
Job Type
Full Time Job
Job ID
Date Posted
9 months ago
Gabrielle Paris
Job Views

Job Description

About the Job

We are currently seeking a Senior Counsel - Intellectual Property to join Chanel UK’s Intellectual Property Team, based in our Croydon office, with occasional travel to Central London, and reporting to the Head of Intellectual Property (Regional).

The role requires sufficient experience to work largely at an independent level, with a highly collaborative approach, in a supportive environment that expects curiosity and an appetite for learning.  

The successful candidate will work on a wide variety of business-critical IP issues, with individuals and teams at all levels, both internally and externally. Working closely with the business, primarily in the UK and Ireland, as well as in Canada, South Africa and Australia, to give strategic and day-to-day support. There is also daily collaboration with Chanel’s other Regional IP teams in various locations across the world, as well as close working with the Global IP team and with the wider Legal Team. 

Leveraging your unique experiences will enable you to support and advise the business in the following areas of expertise:

  • IP Strategy: be a key contributor to harmonized and ambitious strategies for the UK Region, aligned with the global IP priorities and strategy for the effective clearance, maintenance, development   and enforcement of trade marks, designs, copyright and domain names.

  • Trade Mark Clearance Searches: independently conduct and analyse trade mark clearance searches. Clearly and concisely express solutions-driven advice to the business.

  • IP Registration: reflecting the global IP strategy, create and implement IP registration programmes across the UK Region.

  • Trade Mark Objections & Oppositions: monitor and object to third party applications, prepare and support oppositions by collating evidence, assisting in/drafting affidavits, witness statements,  settlement agreements and related documents. Handle and collaborate with others on complex multi-territory trade mark disputes.

  • IP Infringements: based on global and regional strategies, monitor, conduct and support actions  against third party infringers, including preparation of cease and desist letters, undertakings and settlement agreements. In an enforcement or litigation context or otherwise, assist with preparation of instructions to counsel and gather and present evidence.

  • Commercial Agreements: review, draft and negotiate IP provisions in commercial agreements and provide clear, concise legal advice/solutions on IP-related contractual issues.

  • Research, Reporting & Presenting: conduct IP-related research, prepare and present advice, reports and analysis for key stakeholders.

You are energised by…

  • Building relationships at all levels, working in a highly collaborative and international environment, with a complex structure.

  • Partnering, both within and outside our industry.  

  • Personal and professional development.

  • Presenting IP advice and a point of view to the business in a commercial manner.

  • Providing a high level of accuracy and attention to detail.

What you can bring to the team…

  • Curiosity, a commercial mindset and a genuine interest in the retail sector

  • Energy, enthusiasm and critical thinking

  • Organised, methodical and extremely accurate, with meticulous attention to detail

  • Ability to prioritise, work to tight deadlines and exercise efficient time management

  • Ability to take the initiative. Self-motivated, with an ability to operate both autonomously and within a team.

  • A professional attitude

  • Excellent communication skills in spoken and written English

  • Reliable, supportive, pragmatic and adaptable.

  • Work effectively and efficiently, maintaining confidentiality as appropriate

You will:

  • Be a Chartered Trade Mark Attorney or UK solicitor or barrister.

  • Have private practice experience.

  • Have a clear understanding and appreciation of the distinction between in-house and a private practice mindset, and preferably have relevant in-house IP experience.

  • Have the ability to create strong business partnerships with both local and global teams as well as third parties

  • Liaise effectively, calmly and appropriately with all levels within the group, both locally and internationally, as well as with external contacts 

  • Have previous experience with an IPR database such as Diams IQ, and preferably with other tools such as Power BI. Knowledge of other legal tech tools preferred but not essential.

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