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