IP Paralegal

Job Title: IP Paralegal

Reports To: Senior Counsel, IP & Innovation APAC, dotted line to IP Counsel

Context/Scope:
As part of the Global IP Team, this role has responsibility for the clearance, protection and registration, enhancement and renewal of Diageo's Global Whisk(e)ys IP portfolio of trade marks, designs and copyright across a range of markets and brand teams.

Dimensions:
IP work across all of Diageo's critical Global Whisk(e)ys brands and support colleagues within the global IP & Innovation function as required. In addition, assisting the broader Legal Department and the Regional & Global Whisk(e)y Teams to meet long and short-term business objectives.

Market Complexity:
Primary support will be provided to Diageo's Global Whisk(e)ys brand and innovation teams. Supporting lead counsel, this role requires understanding of the broader Scotch agenda as defined by the Scotch Whisky Association and subsequently, be able to apply this knowledge to help the business navigate the complex restrictions presented by the Scotch Whisky Regulations and the corresponding Geographical Indication.

Scotch Whisky is one of Diageo's key beverage alcohol categories with a challenging innovation and renovation agenda, as well as a significant number of global marketing campaigns. Requires supporting the execution of global driven initiatives in diverse regions and markets in a risk balanced manner. This role is responsible for coordinating and/or supports the IP clearance, registration, management, enforcement (to a limited extent) and renewal (to a limited extent) of the Whiskey brands in a range of markets with widely varying degrees of sophistication and complexity in terms of protection offered and enforcement permitted.

To the extent that it is needed, this role will also provide IP support to the Breakthrough Innovation, M&A and Brand Protection teams.

The relevant markets will also typically involve IP registries where bureaucracy, significant delays in process and unpredictable changes in practice are common and require skill and tenacity in order to successfully navigate them.

Purpose of Role:
Collaborate within a team consisting of the General Counsel Global IP, Senior Counsels, IP Counsels, Trade Mark Attorney and other IP Paralegals. Having responsibility for a significant portfolio to deliver high-quality, commercially orientated Intellectual Property legal services to Diageo and the Whisk(e)y marketing and innovation functions.

Key outputs may vary over time, however, these typically include:

• Participating effectively as a member of a team delivering all aspects of world-class IP legal services.
• Assisting in all aspects of trademark clearance, prosecution, registration, conflicts, and renewals, for example:
  • Conducting preliminary clearance searches, analysing results, and preparing draft reports for the business.
  • Instructing clearance searches in the relevant territory, analysing results, and preparing draft reports for the business.
  • Filing trademark and/or design applications and prosecuting them through to registration (e.g., handling examination reports and supporting documentation) via our dedicated agent.
  • Reviewing draft opposition, revocation, or cancellation notices for trademark proceedings; collecting and collating evidence to support opposition proceedings; and preparing draft supporting observations.
• Handling all relevant data input and liaising with external agents and counsel.
• Reviewing and approving new or renovated packaging and/or advertising and marketing materials.
• Assisting IP Counsel with litigation involving Diageo's IP rights, where necessary.

Top Accountabilities:
Enabling achievement of Performance Ambition

• Help #clearthepath through the provision of pro-active and fit for purpose legal management and support in relation to the protection, enforcement and exploitation of our IP assets in a range of markets for our Global Whisk(e)ys brands.

Drive out costs to invest in growth

• Deliver all the above in the most cost-effective way and in accordance with the Diageo's IP approach and protocols to provide legal support to Diageo in relation to management of the IP portfolio, and find opportunities to reduce end-to-end legal costs by optimizing use of internal and external legal resources.

Reputation Management

• Be an ambassador for driving achievement of our Performance Ambition outcome of exemplary conduct.

Qualifications and Experience Required:

• A solid foundation in IP is required, with a minimum of 12-18 months prior experience. A Chartered Trade Mark Attorney qualification or law degree is advantageous but not required.
• Law firm or in-house experience with large or complicated multi-jurisdiction trade mark portfolios.
• Experience with contested IP proceedings is advantageous.
• A good working knowledge of trade mark law and practice.
• Working knowledge of copyright, patent and trade secret protection and other related areas is also advantageous.
• Developed computer skills, including on-line trade mark clearance searching, trade mark maintenance database software (Anaqua preferred), word processing, and Excel.
• Willingness to have a flexible time work schedule, to help accommodate time zone differences within the IP team and global business.
• Excellent analytical, commercial, and pragmatic approach - applies knowledge of the law and understanding of the business, with shown ability to generate respect from both the business and colleagues for judgement, approach and commitment.
• Excellent interpersonal/communication skills; experience of effective engagement with business partners, always creating a good impression and being approachable; viewed as a reference point.
• Excellent professionalism, commitment and integrity.
• Confident in and sensitive to different cultures and a passion for Diageo's success.
• Demonstrates deep personal accountability for great performance, stays focussed on commercial priorities and critical business agenda.
• Knowing and being responsive to external influences on the business and knowing when and where to provide input/stand ground.

Working with Us
Flexibility is key to success. From part-time and compressed hours to different locations our people work flexibly in ways to suit them. Talk to us about what flexibility means to you and we'll work together so that you're supported from day one.

We recognise and value performance, offering our people a highly competitive Rewards and Benefits package.

Our purpose is to celebrate life, every day, everywhere. And creating an inclusive culture, where everyone feels valued and that they can belong, is a crucial part of this.

We embrace diversity in the broadest possible sense. This means that you'll be welcomed and celebrated for who you are just by being you. You'll be part of and help build and champion an inclusive culture that celebrates people of different gender, ethnicity, ability, age, sexual orientation, social class, educational backgrounds, experiences, and more.

Our ambition is to create the best performing, most trusted and respected consumer products companies in the world. Join us and help transform our business as we take our brands to the next level and build new ones as part of shaping the next generation of celebrations for consumers around the world.

Feel inspired? Then this may be the opportunity for you!

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