Legal Counsel - Trademark & Domain Names Lazio

Legal Counsel - Trademark & Domain Names
Roma
Lazio, Lazio

WHO WE AREWe are EssilorLuxottica, a global leader in the design, manufacture and distribution of ophthalmic lenses, frames and sunglasses.

The Company brings together the complementary expertise of two industry pioneers, one in advanced lens technologies and the other in the craftsmanship of iconic eyewear, to create a vertically integrated business that is uniquely positioned to address the world's evolving vision needs and the global demand of a growing eyewear industry.

With over 180, 000 dedicated employees in 150 countries driving our iconic brands, our people are creative, entrepreneurial and celebrated for their unique perspectives and individuality.

Committed to vision, we enable people to "see more and be more" thanks to our innovative designs and lens technologies, exceptional quality and cutting-edge processing methods.

Every day we impact the lives of millions by changing the way people see the world. JOB SCOPE AND MAIN RESPONSIBILITIES:Reporting to the Senior Legal Counsel, the Legal Counsel will provide support to develop and implement clearance/filing strategic advice, risk assessment, best practices, guidance and support that enables the business to achieve its strategic mission in a way that minimizes legal risk for the business regarding the launch of new products or new communication initiatives.

More specifically: Managing a global trademark portfolio, including trademark clearance, prosecutionConducting and reviewing trademark searchesProviding clear and actionable legal counsel on risk analysis and mitigation strategies for trademarks, trade dress, product designs, copyrights and domain namesPreparing and prosecuting trademark, trade dress, copyrights in Europe, and Italy in particularProviding support to the enforcement of intellectual property rights, in Italy and internationally, including cease & desist communications as well as UDRP proceedingsDrafting and negotiating coexistence agreements, consent agreements, settlement agreements and trademark and other IP license agreements when requestedProviding legal support for trademark, copyright and domain name aspects of deals, licenses, agreements and other transactions including due diligence and review of agreementsWorking with and supervising outside counselsTraining clients on IP principles and corporate policies and proceduresBuilding and maintaining strong client relationshipsWorking collaboratively within Legal and with business partners to identify and execute creative and practical legal and business solutionsAdvising IP stakeholders on trends and developments in IP law esp.

new emerging issuesWorking with and supervising the work of trademark paralegals AREAS OF RESPONSIBILITIES AND RELATED ACTIVITIES:Review and provide risk assessment on TM clearanceFiling strategy and prosecution workDrafting and negotiating coexistence agreements, consent agreements, settlement agreements and trademarkSupervising paralegalsNETWORK OF INTERACTION: INTERNAL : legal team both in Italy/France and global level, business clients (all functions), procurement and finance teamsEXTERNAL : outside counsels, local competent authoritiesTECHNICAL SKILLS - PORTRAIT OF A PERFECT CANDIDATELaw degree in intellectual property lawsQualification as IP/TM Counsel (or in process for obtaining the qualification) is mandatoryAt least 3 years in law firms and/or inhouse with experience in the field of luxury brands or FMCG (Background in intellectual property rights is a pre-requisite)Interested in new emerging legal issuesGood knowledge of Italian and European Laws and practicesExposure to international contracting practices Interested in developing negotiation and risk management skillsAble to operate at multiple levels including with business clients, external service providers and other stakeholdersGood verbal and written communications skills, listening, influencing and presentation skills, ability to work and communicate in a diverse global organizationAbility to prioritize and manage multiple tasks simultaneously, strong at problem-solving and critical thinkingTeam player, with cultural awareness and curiosity, willing to work with other functions and members of the Legal team on joint initiativesProficient in Windows programs