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KERING Legal Counsel, Intellectual Property

Kering - Regular
NEW YORK - United States of America

A global Luxury group, Kering manages the development of a series of renowned Maisons in Fashion, Leather Goods, Jewelry and Watches: Gucci, Saint Laurent, Bottega Veneta, Balenciaga, Alexander McQueen, Brioni, Boucheron, Pomellato, Dodo, Qeelin, Ulysse Nardin, Girard-Perregaux, as well as Kering Eyewear. By placing creativity at the heart of its strategy, Kering enables its Maisons to set new limits in terms of their creative expression while crafting tomorrow's Luxury in a sustainable and responsible way. We capture these beliefs in our signature: “Empowering Imagination.”

Your Opportunity 

Kering is investing in a new role, Counsel, Intellectual Property, responsible for supporting the IP needs of the company's internal clients in the Americas region.  This position will be responsible for partnering closely with and providing routine counsel and legal support to the company on IP matters, including developing, implementing and leading a brand protection program for the company's brands in the region. The position will report to the General Counsel. 

The Kering Americas organization supports 4,500 employees belonging to 12 different European luxury houses and located across 5 countries in North & South America.  The role of Counsel, Intellectual Property will require a driven individual, looking for a fast-paced, dynamic and complex work environment. The position will work closely with various internal stakeholders ranging from the company's Director of IP, brand counsel, brand management and others. The role will strive to provide supportive and streamlined experience to our brands in close alignment with Kering’s core values with an eye toward strategic brand protection / enforcement, efficiency, and delivering IP enforcement program metrics.

How You Contribute

A successful candidate for Counsel, Intellectual Property will be able to support, protect and challenge internal clients by:

- Advising and supporting strategy relative to IP litigation impacting the company's brands.

- Reviewing, drafting and/or negotiating various IP-sensitive agreements - including licenses, technology agreements, influencer agreements, publicity agreements, copyright agreements, photographer agreements, campaign agreements, sponsorship agreements, content-creation agreements, procurement agreements, et al.

- Supporting brand trademark portfolio management and prosecution work by collecting evidence, reviewing and advising on optimal classification of goods.

- Supporting brand copyright and patent matters, as needed.

- Supporting and conducting initial investigations into possible infringements and enforce brand IP rights as necessary, handling incoming IP demands as they arise.

- Drafting and responding to cease and desist letters and negotiating successful outcomes for the brands.

- Providing US legal advice to brand counsel based in Europe, as needed.

- Providing US legal advice and supporting the company's IP policies through close consultation, alignment and partnership with the company's IP Director based in Europe.

- Conducting IP-related due diligence and counsel stakeholders on IP issues in M&A transactions.

- Supporting digital development projects, branding initiatives, social media strategies and other brand promotional activities

- Managing outside counsel in respect of IP-related dispute resolution, including litigation.

- Preparing and conducting periodic client training programs on marketing, unfair competition and other IP issues.

- Keeping abreast of legal decisions, statutory changes and other developments, and advise the company on the same.

- Developing strong internal relationships with regional and global brand management, brand counsel to become a trusted resource and subject matter expert.

- Assisting in the supervision of paralegal in connection with brand protection activities.

- Building and managing strong relationships and gaining organizational buy-in and adoption in a highly matrixed, global organization to ensure consistency and best practice sharing. 

- Leading by example and positively influence stakeholders, clients and team members.     

- Other duties as assigned.

Who you are
- 5-8 years’ experience as intellectual property / advertising and/or media counsel, with sufficient experience and ability to handle responsibilities with minimum supervision. Both external and in-house experience preferred.

- Exceptional working knowledge of IP, in particular trademark and marketing law.

- Experience with brand enforcement activities including cease and desist letters, take-down notices, UDRP proceedings, and oppositions before the USPTO and international trademark offices.

- Experience supporting global projects highly desirable.

- Strong organizational, interpersonal and communication skills.

- Ability to manage a variety of internal client demands appropriately and work in a fast-paced environment.

- Initiative and ability to work autonomously and set strategic goals, while remaining a strong and supportive team member.

- Exercise good judgment and recognize when to ask for help or escalate issues.

- Ability to handle sensitive / confidential Information requiring a high level of discretion, respect and integrity.

- Strong time management, project management and prioritization skills, with the ability to multi-task and manage multiple projects / matters to closure.

- Strategic thinker with an ability to leverage business sense, creative problem-solving skills and sense of prioritization when resolving issues.

- Exceptional networking and relationship management skills; ability to influence change and instill confidence in stakeholders at all levels of the organization to help advance Kering’s IP goals.  Prior experience operating in both global and/or highly matrixed organizations ideal. 

- Strong, clear, concise verbal and written communication skills that can adapt based on the audience; comfort in communicating to senior management and internal clients at all levels of the organization.

- Strong project management skills; able to work under stringent deadlines and high pressure and be able to prioritize a heavy workload with multiple deadlines. Ability to work autonomously and with flexibility.

- JD from an ABA accredited top law school, member of good standing in at least one State Bar, preferably in New York (or ability to register as In-House Counsel in New York).

  • Full time
  • North America
  • United States of America
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