Group Legal Counsel: Trademarks

2 weeks ago

Durban North, KwaZulu-Natal, South Africa Aspen Pharma Group Full time

ROLE PURPOSE:


This position is responsible and accountable for the accurate and timely, maintenance, renewal, and protection of the Aspen Group's global trademark and domain name portfolio, as well as the accuracy and maintenance of the IP database and records.

The position is also responsible for the protection of all Aspen brands.

The position also includes, from time to time, providing researched opinions and strategic direction to the business regarding all trademark, domain name and general IP-related matters, the diligent management of assigned trademark litigation and oppositions, and the supervision and training of support staff on trademark matters.

The position is also responsible for offering transactional support to the business through research, detailed analysis, and reporting on registered and unregistered IP rights as well as the drafting of and review of IP-related clauses and agreements.


KEY PERFORMANCE AREAS:

  • Research and analysis of international search results and written opinions on availability for trademarks for use and registration, reporting to the respective affiliate by means of accurate and understandable written opinions to enable the affiliates to make sound commercial decisions, aligned with the Group strategy.
  • Management of the Global Aspen trademark portfolio, aligned with Group strategy, including the filing, prosecution, maintenance, and renewal of all Aspen trademarks as well as the accuracy and maintenance of the IP database and records. Providing researched opinions on complex IPrelated matters, based on expert knowledge of international trademark law, the business, and experience in the pharmaceutical industry.
  • Specialised drafting, analysis, and legal advice on IP agreements and IP clauses as well as providing advice and transactional support to the affiliates of the Group on acquisition and divestment transactions in relation to both registered and unregistered IP rights with a specific focus on trademarks that includes the review of IP rights audits for purposes of legal due diligence.
  • Diligent and accurate monitoring of international watch notice reports received from Global Agents, identifying and investigating all risks to the Aspen trademark portfolio, advising on the appropriate action to protect Aspen's trademark rights.
  • The diligent management of all assigned contentious or litigious trademark matters, aligned with the applicable Aspen and Group Legal policies and procedures.
  • Monitor, research, and report on new and amended trademark and/or IPrelated legislation and regulations in relevant jurisdictions advising on the impact of such legislation on Aspen's Intellectual Property Portfolio, highlighting any potential risk, and providing recommendations on how to mitigate such risks.
  • Serve as the brand protection Centre of Excellence ("COE") for Aspen with a focus on counterfeit goods and IP infringement, including infringement on digital platforms i.e., social media and online sales platforms.
  • Meaningfully contribute and deliver ancillary legal work in Group Legal across swim lane projects as allocated by the GEL.
  • At all times meet (or exceed) the Group Legal BU KPIs as agreed by the GEL with the Executive leadership of Aspen.
  • Precedent, template and legal opinion development and improvement.

EDUCATION QUALIFICATION AND EXPERIENCE:

  • Legal Degree (preferably LLB)
  • Science qualification (preferably BPharm and or BSc) preferable
  • Admitted Attorney
  • Postgraduate qualification as a trademark attorney (Trademark Practitioner
  • Membership of professional body (such as the Law Society of SA and the South African Institute of Intellectual Property Law (SAIIPL)
  • At least 4 to 6 years' relevant trademark experience
  • Ability to work effectively within a highly diverse global law department
  • Independent management of the maintenance of a large international trademark portfolio
  • Sound legal commercial knowledge and experience
  • Commercial IP experience, including the divestment, acquisition, and licensing of trademarks
  • Trademark litigation and opposition experience
  • Pharmaceutical industry exposure is preferable
  • Experience in Legal project management
  • Strong research and writing skills

SKILLS AND ATTRIBUTES:

  • Strong analytical skills and ability to exercise sound business judgment and work independently but as member of an integrated global law department
  • Established conflict resolution as a default demeanour
  • Display a high level of interpersonal skills
  • Lead or direct a diverse functional program through subordinates as applicable
  • A natural default to accuracy
  • Capable to act as the authoritative source of knowledge on trademark matters within Aspen Legal and within the wider Aspen Group of companies
  • Be capable of creating functional IP (trademark) practices and processes for Aspen

KNOWLEDGE:

  • Thorough understanding of multinational IP laws, particularly trademark legislation
  • Unders

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