Intellectual Property Counsel (Trade marks)


16 days ago


South West




Competitive Salary + Benefits


22nd Nov 2019


Imperial Brands



About us 

Imperial Brands PLC is a dynamic FTSE100 FMCG company headquartered in Bristol with a global workforce of around 32,000 people. Borne out of a strong tobacco heritage, we have continually evolved to embrace changing market dynamics and our purpose is to create something better for the world’s smokers.  Our high-quality cigarette brands include Davidoff, Gauloises Blondes, JPS and West and we are increasingly focused on developing a leading portfolio of next generation products built around the vaping brand blu

With a presence across the EU and in Africa, Asia and the Americas, we offer opportunities to set the strategic direction across multiple markets.

The role 

Imperial Brands, has a vacancy for a talented in-house Intellectual Property Counsel to join its centralised IP (Trade marks) team in its Bristol headquarters. The IP team’s key responsibilities include procuring and managing the delivery of high-quality legal advice to the Group on matters concerning IP rights worldwide, and protecting the integrity, validity and value of the Group’s IP assets. The role has a strong trade mark focus and involves a high degree of autonomy, including having direct responsibility for certain brands and territories within the business.

Key accountabilities

  • Assisting with the management of the Group’s global trade mark portfolio, including filing strategies, maintenance decisions and vulnerability analysis in line with the business’ needs and strategy
  • Procuring trade mark advice for product launches and supporting marketing activities, including conducting branding clearance exercises and assessing the risk profile of each project
  • Managing associated trade mark prosecution work, from objections from Trade Mark Registries to oppositions or cancellation actions by and against third parties
  • Negotiating, reviewing and advising on trade mark agreements such as co-existence agreements or licences, whether internal or external
  • Directing the conduct of disputes and potential litigation concerning the alleged infringement of soft IP rights
  • Providing support to our growing Next Generation Products business, including in relation to its BLU electronic cigarette brand, worldwide
  • Supporting the Group’s Corporate Development team in relation to the acquisition and disposal of soft IP assets
  • Supporting and advising the business in relation to anti-counterfeiting issues, including customs proceedings
  • Delivering training to various stakeholders within the Group
  • Representing the Group’s interests concerning soft IP issues to the external world, including within the legal and industry communities

Skills & experience

  • A qualified solicitor or trade mark attorney with 2-4 years’ relevant experience gained from within the UK or another European jurisdiction, and a strong working knowledge of English and/or European trade mark law
  • A broad set of legal skills, including the ability to provide confident advice to all levels of stakeholders
  • High levels of organisation, accuracy and attention to detail
  • Analytical thinking and strong problem-solving skills
  • Excellent communication and influencing skills and the ability to work within teams and across multiple disciplines and cultures
  • Fluency in written and verbal English; a working knowledge of a second European language would be beneficial
  • Some occasional overseas travel involved in the role.

What we offer

Imperial Brands offers a competitive package of salary, bonus scheme, pension and 25 days holiday (with an additional 4 days on top to cover the Christmas period and bank holidays).

Next steps

Interested applicants should apply with their CV highlighting their suitability for the role. 

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