Trade Mark & Marketing Counsel

British American Tobacco

Trade Mark & Marketing Counsel

£30000

British American Tobacco, City of Westminster

  • Full time
  • Permanent
  • Onsite working

Posted 2 weeks ago, 17 May | Get your application in now before you miss out!

Closing date: Closing date not specified

job Ref: c5e12abe69e540fb919a1e5affc2f7d0

Full Job Description

As a member of the BATMark Trade Mark management team, you are going to contribute to and execute all aspects of BATMark's global IP activity in a manner which :

  • provides a value added service to central management functions and relevant business units;

  • delivers solution-orientated advice and management on all aspects of trade mark related work, including clearance, protection, disputes, trade mark related contracts, corporate support (including M&A) and marketing counselling;

  • manages costs including, but not limited to, reducing reliance on outside vendors as appropriate;

  • ensures the Group's ability to exploit its brands against competitors; and

  • fully utilises the expertise and resource available in the BATMark team to the benefit of IP owners within the BAT Group.


  • What is the direct impact of this role on the team or organization?

    Brands are British American Tobacco's most important assets. The company has one of the largest trade mark portfolios in the world, the management of which is vested in BATMark.

    In addition to protecting the brands through trade marks and other IP rights, BATMark also maximises the value of the asset base through (a) inter-company and third party royalty-bearing agreements, (b) agreements with competitors, (c) settlements with infringers and (d) other agreements.

    BATMark's responsibilities cover the clearance, protection, enforcement, exploitation and transfer of intellectual property rights.

    Trade Mark Counsel / Trade Mark & Marketing Counsel is responsible for this for the brands, regions or categories to which they and their team are assigned, together with other assigned areas of specialist soft IP related expertise .

    M&A, Licensing, Anti-Illicit Trade, Migrations, Regulation. The Trade Mark Counsel / Trade Mark & Marketing Counsel is expected to work effectively with all relevant parts of BAT and assist in the overall development of an IP Centre of Specialist Expertise (COSE).

    To enhance LEX support to the GDB IBGs, Trade Mark & Marketing Counsel's responsibilities also include advising the relevant IBG on both soft IP issues and marketing counselling issues, including compliance with core legal principles, BAT's International Marketing Principles and ensuring best practice with consumer research.

    Reports to

    Head of Trade Marks or Senior Counsel, Trade Marks

    Number of Direct Reports

    Up to 3 (comprising Assistant Trade Mark Counsel / IP Assistants)

    Core Relationships

    Stakeholders of all levels (both within and outside LEX) and in all locations in relation to the brands, regions, categories or projects to which they are assigned.

    The incumbent will supervise and monitor the work of direct reports and external advisers worldwide and deal directly with IP authorities in various countries.

    Geographic Scope

    Global

    Travel Required

    Occasional, sometimes at short notice

    WHAT YOU WILL BE ACCOUNTABLE FOR :
  • Day to day control and management of the soft IP issues and responsibility to direct, co-ordinate and supervise the work of up to three direct reports on trade mark clearance, protection and enforcement activity globally through the effective management and supervision of those direct reports.

  • Provide expert legal advice to BAT central management, group companies and business units on all soft IP issues including clearance and protection prior to launch of new products and trade mark conflicts

  • Take primary responsibility for the trade mark aspects of Mergers and Acquisitions, Agreements, Migrations, and Regulation, including supervision and training of other employees as appropriate and provide assistance where required in relation to all other areas of IP Expertise.

  • Review, draft and advise on a wide range of documents including strategic trade mark licences and assignments, copyright licences and assignments, confidentiality and other commercial agreements both internally within the group and with non-Group third parties.

  • Provision of Legal Advice to Other Central Marketing Teams, namely review, advise on and approve the following : consumer research screening and recruitment materials produced by Central Insights Team, all competitor intelligence and consumer trend reports produced by or for the Marketing Strategy Team, all training documents, manuals and modules produced by the Marketing Development and Marketing Finance Teams.

  • Provision of Guidance for Compliance with International Marketing Principles, including providing advice on the application and interpretation of the International Marketing Principles to all parts of the BAT Group including Head Office, Regional and Area Management Centres and all end markets and assisting Group Internal Audit in monitoring the adherence to the International Marketing Principles of BAT Group Companies and Agencies of Record.

  • Supervise, train and educate direct reports through constant and effective communication and feedback.

  • Secure optimum performance from outside advisers and agents, monitoring the quality of their work, and ensuring that the work is undertaken cost effectively.

  • Ensure consistency in application of all IP policies and procedures on a global level.

  • Keep abreast of worldwide developments in Intellectual Property Law and political changes and monitor and record relevant international competitor activity all to advise senior management of action required..

    To achieve the ambition, we have set for ourselves, we are looking for colleagues who are ready to live our ethos every day., Detailed working knowledge of trade mark laws and practical working knowledge of other IP and related laws, including domain names, social media laws, copyright, designs and contract law.


  • Awareness of competition, commercial and data protection laws.Well-developed drafting skills for commercial agreements, licences, assignments etc with considerable attention to detail and accuracy.

    Awareness of tax and financial implications of commercial and contractual decisions.Good commercial judgement and clear understanding of BAT business, ability to understand and support strategic aims and advise on how to deliver results whilst managing legal risk and executing activities effectivelyClear analysis of relevant issues in line with Group strategy.

    Effective commissioning of internal and external IP services to deliver fully to stakeholder needs.

    Technical / Functional / Leadership Skills Required
  • High degree of self-motivation and self reliance and the ability to achieve timely, defined and measurable results;Ability to diligently manage, follow and supervise others in following standard processes to drive resource efficiencies;

  • Excellent interpersonal skills including an ability to translate complex legal strategies into easily understandable terms and to communicate these effectively both orally and in writing with all levels of management;

  • Ability to provide effective and proactive supervision and management of direct reports, including mentoring and coaching in order to motivate and develop them;

  • Ability to delegate efficiently and train and develop others on business needs and expectations;Ability to work quickly and under pressure, to cope with unexpected and varied demands and manage priorities;

  • Ability to manage deadline demands for a number of matters and stakeholders;Ability to work with all relevant stakeholders to plan and deliver to substantial set budgets;


  • Creativity in resolving issues.

    Education / Qualifications / Certifications Required
  • Professionally qualified as a lawyer or trade mark attorney;

  • Minimum 5 years post qualification experience in international trade mark and intellectual property law, including Court and registry conflicts, M&A, licensing, clearance and protection.

    At BAT we are committed to our Purpose of creating A Better Tomorrow. This is what drives our people and our passion for innovation.


  • See what is possible for you at BAT.
  • Global Top Employer with 53,000 BAT people across more than 180 markets

  • Brands sold in over 200 markets, made in 44 factories in 42 countries

  • Newly established Tech Hubs building world-class capabilities for innovation in 4 strategic locations

  • Diversity leader in the Financial Times and International Women's Day Best Practice winner

  • Seal Award winner one of 50 most sustainable companies


  • BELONGING, ACHIEVING, TOGETHER

    Collaboration, diversity and teamwork underpin everything we do here at BAT. We know that collaborating with colleagues from different backgrounds is what makes us stronger and best prepared to meet our business goals.

    Come bring your difference!

  • UK yearly Incentive Bonus competitive % based on business results and average annual salary

  • Attractive Private Pension Plan - up to 15%, Private Medical cover, Doctor @hand-24 / 7 GP appointments, by video or by phone, 365 days a year, from anywhere in the world

  • Share Reward Scheme (free shares and share saving scheme), Group Personal Accident Insurance, Life Assurance

  • Flexible Benefits Scheme : Tax Return Assistance, Cycle To Work, Holiday Trading, Dental Insurance, Travel Insurance; Onsite Gym and Gyms Discounts-discounts at over 3,700 gyms, SPAs, pools, studios and outdoor fitness events across the UK;


  • Season Ticket loans-Interest free loans for purchase of annual tickets for public transport