LEGAL COUNSEL - TRADEMARK & DOMAIN NAMES

WHO WE ARE We are EssilorLuxottica, a global leader in the design, manufacture and distribution of ophthalmic lenses, frames and sunglasses.
The Company brings together the complementary expertise of two industry pioneers, one in advanced lens technologies and the other in the craftsmanship of iconic eyewear, to create a vertically integrated business that is uniquely positioned to address the world’s evolving vision needs and the global demand of a growing eyewear industry.
With over dedicated employees in 150 countries driving our iconic brands, our people are creative, entrepreneurial and celebrated for their unique perspectives and individuality.
Committed to vision, we enable people to “see more and be more” thanks to our innovative designs and lens technologies, exceptional quality and cutting-edge processing methods.
Every day we impact the lives of millions by changing the way people see the world.
JOB SCOPE AND MAIN RESPONSIBILITIES.
Reporting to the Senior Legal Counsel, the Legal Counsel will provide support to develop and implement clearance/filing strategic advice, risk assessment, best practices, guidance and support that enables the business to achieve its strategic mission in a way that minimizes legal risk for the business regarding the launch of new products or new communication initiatives.
More specifically.
Managing a global trademark portfolio, including trademark clearance, prosecution Conducting and reviewing trademark searches Providing clear and actionable legal counsel on risk analysis and mitigation strategies for trademarks, trade dress, product designs, copyrights and domain names Preparing and prosecuting trademark, trade dress, copyrights in Europe, and Italy in particular Providing support to the enforcement of intellectual property rights, in Italy and internationally, including cease & desist communications as well as UDRP proceedings Drafting and negotiating coexistence agreements, consent agreements, settlement agreements and trademark and other IP license agreements when requested Providing legal support for trademark, copyright and domain name aspects of deals, licenses, agreements and other transactions including due diligence and review of agreements Working with and supervising outside counsels Training clients on IP principles and corporate policies and procedures Building and maintaining strong client relationships Working collaboratively within Legal and with business partners to identify and execute creative and practical legal and business solutions Advising IP stakeholders on trends and developments in IP law esp.
new emerging issues Working with and supervising the work of trademark paralegals   AREAS OF RESPONSIBILITIES AND RELATED ACTIVITIES.
Review and provide risk assessment on TM clearance Filing strategy and prosecution work Drafting and negotiating coexistence agreements, consent agreements, settlement agreements and trademark Supervising paralegals   NETWORK OF INTERACTION.
INTERNAL .
legal team both in Italy/France and global level, business clients (all functions), procurement and finance teams EXTERNAL .
outside counsels, local competent authorities   TECHNICAL SKILLS - PORTRAIT OF A PERFECT CANDIDATE Law degree in intellectual property laws Qualification as IP/TM Counsel (or in process for obtaining the qualification) is mandatory At least 3 years in law firms and/or inhouse with experience in the field of luxury brands or FMCG (Background in intellectual property rights is a pre-requisite) Interested in new emerging legal issues Good knowledge of Italian and European Laws and practices Exposure to international contracting practices Interested in developing negotiation and risk management skills Able to operate at multiple levels including with business clients, external service providers and other stakeholders Good verbal and written communications skills, listening, influencing and presentation skills, ability to work and communicate in a diverse global organization Ability to prioritize and manage multiple tasks simultaneously, strong at problem-solving and critical thinking Team player, with cultural awareness and curiosity, willing to work with other functions and members of the Legal team on joint initiatives Proficient in Windows programs