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Intellectual Property Counsel – Europe

Diageo

London, United Kingdom

Diageo is the world’s leading premium drinks company, a business built on the principles and foundations laid by the giants of our industry.

Our purpose, celebrating life, every day, everywhere means that our brands are part of celebrations big and small. We believe that living our purpose in full is to make the most of life - to be the best you can be at work, at home, with friends, in the community, and for the community.

With this role, you will be required to prepare and deliver high quality, commercially astute and cost-effective IP legal advice to Diageo. In particular, we would expect that you handle a wide range of IP queries in Europe (key stakeholders including the innovation and marketing teams) and be the point of contact for legal queries for Diageo Global Licensing.

Responsibilities:

Provide commercial and cost-effective support to the Europe innovation and marketing teams, advising on a wide range of IP issues and also identifying potential regulatory (EU spirit regulation) issues
Establish proactive counselling relationships with Diageo marketing and innovation personnel, tax and other Global Functions for the business in Europe
Managing all aspects of the trade mark portfolio for Europe across all Diageo brands to ensure cost effective IP protection (including clearance and filing strategy, official actions, oppositions and cancellations)
Handle advertising and packaging approvals

Qualifications and experience required

Excellent knowledge of European Community trade mark, design and copyright laws (and working knowledge of patent and trade secret protection and other IP areas)
Significant experience in handling enforcement matters such as co-ordination of investigations, cease & desist letters and other pre-litigation enforcement measures; experience of all aspects of trade mark and other IP litigation including look-a-likes and counterfeits and ideally illicit parallel imports
Significant experience in drafting and negotiating IP related documents, such as licences, assignments and co-existence agreements etc.
Experience in management of trade mark opposition, cancellation, and other conflict matters
Experience in educating a commercial business on IP desirable
Ability to challenge stakeholders, to “own” the IP agenda and the confidence to give stakeholders a clear and robust recommendation
Ability to identify IP legal and commercial issues and propose practical and efficient strategies to address them
Ability to express complex IP legal concepts and opinions in a clear, succinct and commercial manner
Qualified Solicitor admitted in England and Wales, France, Germany, Spain, Australia, or New Zealand
Minimum of 2 years PQE
IP (commercial and litigation) experience, part of that experience preferably gained in a city firm


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