Manager - Trademark Counsel

4 months ago

Hong Kong, Hong Kong SAR China Adidas Full time

At adidas we work as a team, we play as a team and we constantly strive to achieve the highest performance.

We’re currently seeking a qualified lawyer to join the adidas Sourcing Limited and, as part of a close knit team, provide legal support to protect our intellectual property of our business in Asia (excluding China).

In this role, reporting to the Director Trademark Counsel for Asia (excluding China), you’ll manage a diverse portfolio of intellectual property legal work.

If you’re a team player who combines outstanding business skills and an excellent legal training with motivation, energy and a passion to achieve, we’ll give you variety, responsibility, and a chance to excel as a business lawyer.

Purpose & Overall Relevance for the Organisation:

Provide in-house legal services to manage the protection of all intellectual property rights of the brand in Asia excluding China: Hong Kong, Taiwan, Japan, Korea, Singapore, Malaysia, Thailand, Vietnam, India, Indonesia, the Philippines, and others Ensure the compliance of local laws and regulations for all brand protection work, in relation to the creation, maintenance, protection and enforcement of adidas intellectual property rights

Key responsibilities

Enforcement of Intellectual Property Rights

Identify suitable targets for law enforcement actions (criminal and/or civil) to consolidate the status of all the brand’s key trademarks in the region Work with law enforcement authorities e.g. customs and police, in taking legal actions and provide accurate statements / affidavits to enable successful prosecution of counterfeiters Supervise, manage and liaise with third party agents and service providers (e.g. law firms, other consultants) in conducting enforcement actions and brand protection activities, including civil actions and litigations against third parties who infringe any adidas IP rights Attend meetings organized by local anti-counterfeiting / IP associations and conduct relevant trainings / expositions (lobbying) to support and develop anti-counterfeiting network in Asia and drive actions (where possible) Participate in and drive activities for the promotion of awareness of intellectual property matters to business stakeholders, including trainings and presentations to local adidas business entities in Asia with a view to gaining their help and support and managing expectations Handle clearance requests from business entities against third party’s IP rights, on new designs and names for products, events, and promotional campaigns Work closely with other legal departments of adidas to ensure effective collaboration to achieve an advantageous position for adidas from the IP perspective Act as the frontline manager and initial point of contact for all intellectual property related matters when dealing with vendors and other adidas business units Support the Director with the prosecution and enforcement of adidas trade marks and designs in the region, if necessary taking into account of the local market; to include collation of evidence of use of adidas, preliminary in-use investigations of third party rights Conduct regular compliance trainings to service providers including law firms and enforcement agencies, for example the company’s anti-bribery policy

Security Label Program

Act as the frontline manager and initial point of contact for all matters related to the security label program including dealing with vendors, LO’s, subsidiaries, licensees and any other business entities on any issues related to the program Be responsible for factory audits in Asia, to ensure factories are following adidas policies on security label; to identify any loopholes to enhance the overall management efficiency in terms of the security label program Be responsible for the maintenance of the SOP of the security label program, corresponding to any system updates to ensure smooth operation at suppliers

Key relationships

Reporting to Director Trademark Counsel – Asia Global Trademark Team and Global Legal and Compliance Departments Market business stakeholders Third Party Legal Advisors Law enforcement officials

Knowledge, skills and abilities

Excellent client relations management skills (including ability to interact with clients at all levels from most senior to most junior) Excellent written and verbal communication skills required in order to liaise with internal and/or external parties Ability to work independently and manage and prioritize substantial and diverse workload Strong team player Willingness to travel domestically and internationally Strong commercial sense and ability to make practical evaluations of risks High degree of stakeholder orientation and appropriate prioritization Excellent analytical skills in order to analyze complex issues and to improve processes and techniques

Requisite education and experience / minimum qualifications

A qualified solicitor in a common law or equivalent jurisdiction with at least 3 years' post qualification experience, preferably with relevant in-house experience Strong background in IP laws or Civil / Criminal laws Experience in a similar role within a multinational company preferred

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