Job Description: Trademark Counsel
We are seeking an experienced and highly skilled Trademark Counsel to join a Multinational Retail Company in Shenzhen, China.
Responsibilities:
1. Trademark Management: Take ownership of the overall trademark management strategy, including the development and implementation of policies and procedures to protect and enforce our trademark portfolio effectively. This involves conducting trademark searches, clearance reviews, and advising on the availability and registrability of new trademarks.
2. Intellectual Property Support: Collaborate closely with our US counterparts to provide legal support and guidance on trademark matters. This includes advising on trademark disputes, oppositions, and cancellations, as well as responding to cease and desist letters and infringement allegations.
3. Drafting and Review: Prepare, review, and negotiate a wide range of IP-related documents, including trademark license agreements, coexistence agreements, consent agreements, and other contracts pertaining to intellectual property rights. Ensure compliance with applicable laws, regulations, and company policies.
4. Brand Protection: Develop and implement strategies to protect our brand, trademarks, and intellectual property rights from infringement and unauthorized use. Monitor and address potential trademark infringements and take appropriate enforcement actions, such as drafting cease and desist letters or initiating legal proceedings when necessary.
5. Trademark Portfolio Management: Oversee the maintenance and renewal of our trademark portfolio, ensuring all necessary filings and deadlines are met. Coordinate with external counsel and trademark agencies to manage trademark registrations, renewals, assignments, and changes in ownership.
6. Legal Compliance: Stay abreast of relevant laws, regulations, and industry trends related to trademarks and intellectual property. Advise internal stakeholders on best practices and ensure compliance with applicable legal requirements in various jurisdictions.
Requirements:
1. Law degree or equivalent from a reputable law school.
2. Admission to the bar in at least one jurisdiction.
3. Minimum of 5 years of experience as a Trademark Counsel or similar role, preferably in a corporate setting or reputable law firm.
4. Strong knowledge of trademark law, intellectual property rights, and related legal concepts.
5. Demonstrated experience in managing trademark portfolios and handling trademark disputes and enforcement matters.
6. Excellent drafting and negotiation skills with the ability to review and revise complex legal documents.
7. Detail-oriented mindset with strong analytical and problem-solving abilities.
8. Proven ability to work independently as well as collaboratively in a fast-paced environment.
9. Exceptional communication skills, both written and verbal, with the ability to effectively interact with stakeholders at all levels.
10. Fluency in Mandarin Chinese and English (both written and spoken) is required.
