Senior Legal Analyst Trademarks - LA

Mondelez International · Birmingham

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Job Description

Are You Ready to Make It Happen at Mondelēz International?

Join our Mission to Lead the Future of Snacking. Make It Matter.

Under the guidance of Mondelēz International’s Director & Senior Counsel Trademarks for the Latin America (LA) region, you deliver on our legal strategy, activities, and service delivery model in a legal specialist area of focus. You use your ability to work independently, your in-depth knowledge, and significant experience in a specialty area to apply legal knowledge in the practice area and propose legal solutions.

How you will contribute

Under the guidance of Mondelēz International’s Director & Senior Counsel Trademarks for the LA region, you will deliver on our legal strategy, activities, and service delivery model in a legal specialist area of focus. In this role, you provide strategic legal support to the legal business unit, region and global stakeholders and work closely with them to ensure legal concepts and implications are understood and related legal and operational risks are assessed. You will operate systems and technologies relevant to the area of support, prepare documents, gather information, and interact with business partners to deliver objectives and provide expertise and experience in a legal specialty area to identify and advise on laws and regulatory changes for a given country and/or across multiple countries.

What you will bring

A desire to drive your future and accelerate your career with:

• Legal experience in a large matrixed multinational company.
• Working independently and coping with time pressured situations and deadlines.
• Excellent problem-solving, project management, and time management skills.
• Excellent written and verbal communication and interpersonal skills.
• Technology and Systems Savvy; ability to operate and manage systems and technologies relevant to job.

More about this role

What you need to know about this position:

The Senior Legal Analyst – Trademarks will be responsible for providing a full range of trademark support and advisory services across MDLZ regions, with a particular focus on the Latin America (LA) region. This includes the support and management of searches, filings, prosecution, TM Registry conflicts, and brand enforcement for the trademark portfolios within this region. This role reports to the Director & Senior Trademark Counsel for the LA region and also supports the Director & Chief Counsel for IP in delivering the Global IP Strategy through active participation in key tasks and cross-functional projects.

What You'll Be Doing:

Under the guidance of Mondelēz International’s Director & Senior Counsel Trademarks, you will deliver on our legal strategy, activities, and service delivery model within the specialist area of Trademarks.

In this role, you will:

• Provide strategic legal support to the legal business unit, regional, and global stakeholders, working closely with them to ensure legal concepts and implications are understood and related legal and operational risks are assessed.
• Operate systems and technologies relevant to trademark management, prepare documents, gather information, and interact with business partners to deliver objectives.
• Provide expertise and experience in trademark law to identify and advise on laws and regulatory changes for given countries and/or across multiple countries within your scope.

Specifically, as part of the Global IP Team, you will:

• Report to the Director & Senior Trademark Counsel for the LA region in providing trademark advisory services for the LA region, including the supervision and delivery of TM searches, filings, prosecution, Registry conflicts (e.g., oppositions, cancellations, appeals), and brand enforcement for these trademark portfolios.
• Deliver, manage & support search/clearance for new brand launches in the region including the instruction of agents and review/analysis of clearance advice and risks.
• Advise Mdlz business partners in the region of risks and mitigation strategies regarding use of trademarks in new product launches and other marketing and commercial activity.
• Manage, lead and coordinate cross regional search projects with the paralegal for the region.
• Instruct and manage trademark filing and prosecution within the LA region.

• Support in the LA trademark portfolio review and the development of trademark filing strategy for best-in-class protection of key brands in business units.

• Support in developing and implementing trademark opposition strategy for the protection of core brands in the LA region/ business units.
• Manage Trademark watching services for the LA Region, including reviewing, analysing watch results, and taking action through opposition where necessary.
• Instruct and manage trademark oppositions in the LA region, liaising with MDLZ BU stakeholders on opposition strategy and process, and managing external agents.
• Support, review and manage online and offline infringement matters in the LA region, advising BU stakeholders on potential infringements, advising on enforcement strategy and managing outside counsel in delivery of enforcement actions.

• Support the Director & Senior Counsel in Trademark in litigation in region – including court actions enforcing Mdlz trademark rights, advising BU stakeholders of litigation strategy and managing outside counsel in the delivery of IP litigation support.

• Maintain and update records in the Anaqua database (and other filing systems as required) on search, filing, opposition, and enforcement matters in the LA region.
• Support the management and development of strong working relationships with the MDLZ Preferred Agent network in the LA region.

• Manage outside counsel budgets across the LA region, including reviewing and approving invoices, monitoring billing against agreed budgets, and identifying cost-saving opportunities.
• Support the Director & Senior Counsel Trademarks and the Global Trademark Team in fostering and building positive working relationships with internal MDLZ stakeholders within the LA region legal and commercial functions, including participation in training sessions and reporting.
• Participate in cross-functional project groups to support the delivery of the Global IP Strategy and Goals of the Global IP Team.
• Stay up to date on developments in regional trademark practice and procedure.

Job specific requirements:

• Law degree or equivalent qualification (IP electives preferable but not essential).
• Experience of at least five (5) years obtained in either major law firm or trademark attorney practice, or in an in-house role working on a significant trademark portfolio. 
• Working knowledge of Spanish or Portuguese, preferred but not essential.
• Experience in managing multiple and diverse stakeholders in legal/IP matters.
• Working independently and coping with time pressured situations and deadlines.
• Excellent problem-solving, project management, and time management skills.
• Excellent written and verbal communication and interpersonal skills.
• Technology and Systems Savvy; ability to operate and manage systems and technologies relevant to job (e.g., Anaqua database).
• Excellent team player with exemplary people skills, superior analytical, oral, and written communication skills.
• Exemplary planning and organizational skills.
• Ability to work confidently within a matrix organization and under pressure.
• Efficient, confident, pro-active, attentive to detail, reliable, service-oriented, self-starting, with impeccable integrity and willingness to learn.

Business Unit Summary

At Mondelēz International, our purpose is to empower people to snack right by offering the right snack, for the right moment, made the right way. That means delivering a broad range of delicious, high-quality snacks that nourish life's moments, made with sustainable ingredients and packaging that consumers can feel good about.

We have a rich portfolio of strong brands globally and locally including many household names such as Oreo, belVita and LU biscuits; Cadbury Dairy Milk, Milka and Toblerone chocolate; Sour Patch Kids candy and Trident gum. We are proud to hold the top position globally in biscuits, chocolate and candy and the second top position in gum.

Our 80,000 makers and bakers are located in more than 80 countries and we sell our products in over 150 countries around the world. Our people are energized for growth and critical to us living our purpose and values. We are a diverse community that can make things happen—and happen fast.

Mondelēz International is an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, gender, sexual orientation or preference, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

Job Type

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