LATAM IP Counsel

at  Diageo

Job Description :

Top 3-5 Accountabilities:

• Enabling achievement of Performance Ambition
• Provision of pro-active and fit for purpose legal management and support in relation to the protection, enforcement and exploitation of our IP assets in LAC and CCA.
• Drive out costs to invest in growth
• Deliver all the above in the most efficient way and in accordance with the Diageo’s IP approaches and protocols. Provide legal support to Diageo in relation to management of the IP portfolio and find opportunities to reduce end-to-end legal costs by optimizing use of internal and external legal resources.
• Reputation Management
• Be an ambassador for driving achievement of our Performance Ambition outcome of outstanding conduct

Essential Qualifications & Experience:

• Qualified lawyer, from a reputable law school, with IP experience operating at a minimum of 3 years’ experience.
• Proficient Spanish /English (written and spoken.)
• Law firm or in-house experience with large or complicated multi-jurisdiction trademark portfolios
• Experience with contested IP proceedings desirable.
• Comprehensive knowledge of trademark law.
• Working knowledge of copyright, advertising, publicity rights and other related areas desirable.
• Developed computer skills, including on-line trademark clearance searching, trademark maintenance database software (Anaqua preferred), word processing, and Excel

Specialist IP experience

• Confirmed capability of dealing with trademark issues, challenges, and an eye for detail

Professional and Interpersonal Skills

• Excellent analytical, good commercial and pragmatic approach - applies knowledge of the law and understanding of the business, with confirmed ability to generate respect from both the business and colleagues for judgment, approach and commitment.
• Excellent interpersonal/communication skills; experience of effective engagement with business partners, always creating a good impression and being approachable; viewed as a reference point

Management Capabilities

• Excellent professionalism, dedication and integrity.
• Confident in and sensitive to different cultures and a passion for Diageo’s success.
• Ability to prioritize work and deliver against timelines, given 3 day a week work week

Job Title:
LATAM IP Counsel
Direct Reports: None
Reports To:
Lead Counsel, IP and Innovation LAC, Zacapa
Diageo is the world’s leading premium drinks company with an outstanding collection of brands, such as Johnnie Walker, Smirnoff, Baileys, Captain Morgan, Tanqueray and Guinness. With over 200 brands in 180 countries and a global network of entrepreneurial individuals, our teams blend a diverse range of experience, knowledge and skills. We connect customers and consumers to our iconic products and create innovative experiences that bring people together to celebrate life.
Context/Scope:
As part of the Global IP Team, responsibility for assisting the Global Counsel, Tequila and Mezcal, in the clearance, protection and registration, enhancement and renewal of Diageo’s global tequila and mezcal IP portfolio; providing support for the IP Counsels that support Mexico, Colombia, and Venezuela; and providing direct IP legal support and portfolio oversight to the markets in CCA.
Dimensions
Handle IP-related work for tequila/mezcal global portfolios; for the CCA markets; and provide support to the Counsel supporting Mexico, Colombia, and Venezuela. In addition, generally assisting the Global IP Team and the local market legal teams in meeting long and short-term business objectives.
Financial:
There is no formal budget responsibility, but a general requirement to provide support in a commercial and cost-effective manner as well as assisting with the collation of budget information and helping the Lead Counsel handle the IP budget.
Market Complexity:
The LAC and CCA markets are complex within Diageo, resulting from volatility in the region, uncertainty in the application of certain laws and regulations, as well as changing laws and regulations due to the political climate. Counsel must be flexible and creative, forward-thinking and well-attuned to the political environment and evolving legislation and oversee a team that practices these behaviors. This role includes the IP clearance, registration, management, enforcement and renewal for numerous markets, as well as the global tequila and mezcal portfolios, all of which involves Intellectual Property offices with widely varying degrees of sophistication and complexity in terms of protection offered. They also typically involve IP registries with long lead times and where unpredictable changes in practice are common and require skill and tenacity in order to successfully navigate them. The multiple countries, as well as the IP enforcement challenges, require the IP Counsel to be highly organized and efficient.
Leadership Responsibilities:
High levels of independent work and self-motivation.
Must be capable of handling a heavy workload and be able to prioritize and respond within deadlines.
Establish and maintain great relationships with the marketing and innovation teams to ensure that there is the opportunity to input at the right stage on matters which require sound IP judgment and experience.
Maintain positive relationships with key specialist IP law firms, to ensure they understand business needs and provide fit for purpose advice at the right level of cost.
Ability to stand in the future, anticipate and help contribute to the strategy of the Global IP team.
Must be able to work with internal and external legal counsel in other time zones and with different language and cultural backgrounds.
Purpose of Role:
Work within a team consisting of a General Counsel IP, other IP Counsel and Junior IP Counsel. Having responsibility for a significant portfolio to deliver high-quality, commercially oriented Intellectual Property legal services to Diageo marketing and innovation functions, including responsibility for counselling and effective administration of the relevant trademark portfolios.

Key outputs may vary overtime; however, these typically include:

• Participate effectively as member of a team delivering all aspects of elite IP legal services.
• Assist in all aspects of trademark clearance, prosecution, registration, conflicts and renewals for example:
• Conduct preliminary clearance searches; analyze results and prepare draft reports to the business.
• Instruct clearance searches in the relevant territory and analyze results and prepare draft reports to the business;
• File trademark applications and prosecute through to registration (e.g. deal with examination reports and supporting documentation) via our dedicated agent;
• Review draft opposition/revocation/cancellation notices for trademark proceedings, collect and collate evidence to support all opposition proceedings and prepare draft supporting observations;
• Handle all relevant data input, liaising with external agents and counsel.
• Review and approve advertising and marketing materials.
• Review and approve product packaging and labels.
• Review and/or draft IP provisions for agreements, including licensing agreements, settlement agreements, co-existence agreements and partnership agreements.
• Assist with litigation and other conflict matters involving Diageo’s IP rights.

Top 3-5 Accountabilities:

• Enabling achievement of Performance Ambition
• Provision of pro-active and fit for purpose legal management and support in relation to the protection, enforcement and exploitation of our IP assets in LAC and CCA.
• Drive out costs to invest in growth
• Deliver all the above in the most efficient way and in accordance with the Diageo’s IP approaches and protocols. Provide legal support to Diageo in relation to management of the IP portfolio and find opportunities to reduce end-to-end legal costs by optimizing use of internal and external legal resources.
• Reputation Management
• Be an ambassador for driving achievement of our Performance Ambition outcome of outstanding conduct.

Qualifications and Experience Required:

Essential Qualifications & Experience:

• Qualified lawyer, from a reputable law school, with IP experience operating at a minimum of 3 years’ experience.
• Proficient Spanish /English (written and spoken.)
• Law firm or in-house experience with large or complicated multi-jurisdiction trademark portfolios
• Experience with contested IP proceedings desirable.
• Comprehensive knowledge of trademark law.
• Working knowledge of copyright, advertising, publicity rights and other related areas desirable.
• Developed computer skills, including on-line trademark clearance searching, trademark maintenance database software (Anaqua preferred), word processing, and Excel.

Key Functional capabilities:

Specialist IP experience

• Confirmed capability of dealing with trademark issues, challenges, and an eye for detail.

Professional and Interpersonal Skills

• Excellent analytical, good commercial and pragmatic approach - applies knowledge of the law and understanding of the business, with confirmed ability to generate respect from both the business and colleagues for judgment, approach and commitment.
• Excellent interpersonal/communication skills; experience of effective engagement with business partners, always creating a good impression and being approachable; viewed as a reference point.

Management Capabilities

• Excellent professionalism, dedication and integrity.
• Confident in and sensitive to different cultures and a passion for Diageo’s success.
• Ability to prioritize work and deliver against timelines, given 3 day a week work week.

Consistently Delivering Great Performance

• Demonstrates deep personal accountability for great performance, stays focused on commercial priorities and critical business agenda.
• Knowing and being adaptable to external influences on the business and knowing when and where to provide input/stand ground.

Flexibility
This is key to success in our business and many of our staff work flexibly in many different ways. Please talk to us about what flexibility means to you and don’t let anything stop you from applying.
Diversity statement
Celebrating our inclusive and diverse culture is core to Diageo’s purpose of “celebrating life every day everywhere”. This purpose is, in itself, inclusive in nature, as it values everybody irrespective of background, disability, religion, gender identity, sexuality or ethnicity.
We know that for our business to thrive and for Diageo to realize its ambition, we depend on having diverse talent with a range of backgrounds, skills and capabilities in each of the 180 countries in which we operate and to reflect our broad consumer base. We view diversity as one of the key enablers that helps our business to grow and our values, purpose and standards set the conditions for us to respect the unique contribution each person brings.
Worker Type :
Regular
Primary Location:
Mexico City
Additional Locations :
Job Posting Start Date :
2024-07-2