Trademark & IP Counsel (m/f/d)

Bonn, Germany
Deadline for application

June 16, 2020

The Scope

The FSC Legal Department supports all legal and compliance aspects of the FSC Group and advises FSC’s management and its specialized departments in all business aspects. The overall scope covers therefore a variety of law fields, including contract and commercial, private international, labor, antitrust and competition, intellectual property, corporate and tax, IT, tenancy, insurance, public and environmental law.

Your Role

As Trademark & IP Counsel you will support the Legal Department in cooperation with the existing Counsels in the team in legal aspects of the FSC Group including its affiliated companies worldwide with special focus on intellectual property rights including trademark prosecution, enforcement and licensing. Even though you are primarily operating in the aforementioned area, you have an interest in commercial and business law with its links to nearby fields and you bring an international orientation.

The responsibilities and tasks as Trademark Counsel & Ip Counsel include in particular:

• Protect FSC’s trademarks and other intellectual property rights by managing and processing infringement and fraud cases. This includes drafting, revision and negotiation of cease and desist matters.

• Support the revision process and the introduction of proper trademark protection strategies for the FSC Group.

• Support to FSC’s License Program and related negotiations with clients regarding license agreements.

• Oversee external counsel in outsourced trademark prosecution and enforcement cases.

• Guide the Trademark Administrator in selected trademark prosecution work.

• Record and file legal documents related to FSC trademarks, designs, logos and related infringements while working with existing software tools and databases in cooperation with FSC’s Trademark Administrator.

• Respond to inquiries from the FSC Network and other stakeholders related to FSC’s trademarks.

• Give trainings and develop information materials to colleagues and network partners.

• Drafting and reviewing contracts, including general terms and conditions for individual projects and programs from other units or departments.

• Preparation of legal assessment reports/memos and conducting research activities. Prepare presentations in this regard.

• Support to legal compliance programs, e.g. tax law and IP evaluations.

Your Profile

• University degree in law. For lawyers in Germany: Second State Examination (Zweites Juristisches Staatsexamen).

• Ideally at least two or more years of experience as practicing attorney in a law firm or in-house counsel in a Legal Department. (Novices with a strong education and interest in IP are still welcome to apply)

• Knowledge of IP portfolio management database(s) and/or other content management system for law firms/legal departments.

• Experience in international trademark portfolios with specific experience in trademark clearance, prosecution, investigations, enforcement strategies, cease and desist matters and related negotiations.

• Experience in the licensing business and drafting of license agreements.

• Exemplary verbal and written communication skills in English and ideally also in German.

• Good skills in the use of the standard software packages, in particular MS Office 365, Word, Excel and Teams. Experience with Dynamics 365, MS SharePoint, MS Vision and MS Project is helpful.

• Ability to work well as a member of a multi-cultural, inter-disciplinary, multi-lingual, global team.

• Commitment to FSC’s mission and values.

Terms and Conditions

  • Location: Bonn, Germany. Sporadic travel may be involved.
  • Start date: as soon as possible.
  • Duration: two-year contract with the possibility for extension (long-term engagement desirable).
  • Working hours: Ideally full time – 40 hours per week. Working part-time is possible.

How to Apply

  • Please fill in the form below and let us know what motivates you to work for FSC, in this position and why think you are suitable candidate.
  • Submit your CV in English.
  • Please indicate your gross salary expectation.
  • Please do not send any photos of yourself, including as a picture on your CV.
  • Please be informed, that by applying for this position you automatically accept our Data Protection Information on processing your personal data.
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