Senior Manager, Trademark Counsel

Senior Manager, Trademark Cousel 1

Purpose & Overall Relevance for the Organisation:

To advise on all aspects of the creation, maintenance, protection and enforcement of adidas trademarks, designs and other intellectual property except patents, in designated countries and regions (including in India).

Key Responsibilities:

• Manage clearance of adidas names, logos and designs against third party rights, and compliance with adidas trade mark guidelines, including attendance at product line reviews. Formulate clear and practical advice to the business to enable business to make informed decisions.
• Drive adidas brand protection programs (including both anti-counterfeiting and the protection of adidas' 3-Stripe mark) in assigned countries ; provide training to customs and other enforcement authorities on identification of adidas counterfeits.
• Drive legal action against companies or individuals who sell counterfeit products and imitation products in assigned countries.
• Cooperate with local law enforcement such as police and customs including attendance at raids and court hearings (for example as expert witness) and general support with prosecution process.
• Manage third party claims of intellectual property infringement (trademarks, designs and copyright) in assigned countries with a view to minimising business impact.
• Partner with the business to educate and encourage awareness of, and manage expectations in relation to, intellectual property matters; to include conducting training and presentations to business.
• Devise plan of action for online brand protection program in assigned countries (in accordance with Global Trademarks team strategy) including creating and building relations with online monitoring service provider, key platforms, registrars and other stakeholders.
• Support the security label program to include: responding to enquiries regarding the security label program; as appropriate conduct factory audits in assigned countries to ensure factories are following adidas policies on security label; identify loopholes and propose solutions to enhance the overall efficiency and effectiveness of the security label program.
• Collaborate with other members of the Global Trademarks team regarding brand protection activities and trademark prosecution efforts; provide external legal advisors with necessary support in connection with intellectual property legal proceedings (either initiated by or against adidas), including provision of information and collation of evidence.
• Manage special projects relating to intellectual property matters or the team assigned by the Director Trademarks Counsel.
• Advise on intellectual property aspects of commercial agreements (including without limit licence agreements, co-existence/settlements agreements and sponsorship/endorsement agreements).
• Effectively manage and supervise the delivery of legal advice and services in assigned countries through external counsel as needed.

Key Relationships:

• All members of the Global Trademarks team
• Product, design and communications teams in assigned Business Units
• Legal and senior management teams in assigned countries
• Global Legal Product Creation and North American Trade Mark teams
• External counsels in assigned countries
  
  

Knowledge, Skills and Abilities:

• Business-fluent English (required) both written and spoken
• International mindset through previous work experience abroad.
• Excellent organizational skills with an ability to prioritize effectively.
• Team player.
• Flexibility to travel regularly.
• Good communication skills.
• Good MS-Office skills

Requisite Education and Experience / Minimum Qualifications:

• Qualified lawyer or other appropriate legal qualification
• At least 6 years of working experience as a company lawyer within an international environment or in a private practice/law firm managing trade mark portfolios, trade mark clearance and enforcement
• Experience and familiarity with IP laws and court procedures in India is preferred