POSITION DESCRIPTION
Position Title:
Legal Counsel (IP)
Previous Incumbent:
N/A
Business Unit:
Legal & Governance
Location:
Napa
Position Number:
TBC
Manager’s Name:
Anna Gibson
Manager’s Title:
Global Head of IP
FLSA Status (US specific):
Exempt
Full Time/Part Time
Full Time
Financial Dimensions (if
applicable)
N/A
Value ($):
Direct Reports to this Role
NIL
Total Number of Reports
NIL
Purpose of Role (In one or two sentences, why does this role exist?)
To provide:
1.
Specialist advice with respect to the management and enforcement of TWE’s global IP portfolio. TWE currently
manages approx. 4000 ‘live’ trademarks in over 150 countries, as well as a number of patents and designs. A
significant portion of these assets are US based.
2.
Fast, effective and valuable legal solutions, including trade mark clearance advice, infringement advice, marketing
approvals and ensuring compliance with relevant laws and regulations – with a focus on the US.
3.
Drafting and advising on IP related contracts, including licences, assignments, coexistence and settlement
agreements etc.
4.
IP litigation support, where appropriate.
5.
Creating an awareness and understanding of IP policies and procedures through regular training programs and
stakeholder engagements.
6.
Strategic portfolio reviews and rationalisation, including regular gap analyses with related brand teams.
7.
Supporting the wider legal team on general commercial matters, where needed – for example, drafting and
advising on third party service contracts as well as marketing compliance issues.
Key Responsibilities/ Accountabilities:
In coordination with the Global IP and Legal teams, key responsibilities will be to:
Provide advisory services in relation to TWE’s global IP portfolio
Arrange protection for new intellectual property assets, where possible and appropriate
Managing objections or issues raised by national Trade Mark Offices under the prosecution process
-
Managing oppositions or invalidations to IP registrations owned by TWE or by other third parties
Manage renewals of IP assets in consultation with the Marketing department
Monitor brand registrations to anticipate vulnerability to removal for “non-use”
Undertaking clearance searching and advising the business on new brand names and innovations availability and
related infringement risks
Drafting and advising on IP related contracts, including licences, assignments, coexistence agreements,
settlements, and sponsorship agreements (among others)
Co-ordinating to budget the use of external legal advisers, as appropriate
In collaboration with TWE Legal, manage disputes arising in relation to intellectual property issues
Assess new marketing proposals and actively participate in internal clearance processes
Maintain, update and communicate TWE’s registers of co-existence, licence and settlement agreements
Assisting in the development of policies, procedures and training programmes for the US business
To continuously improve the intellectual property function and to develop new practices and procedures as
necessary to provide an excellent service to internal customers
What are the key decisions made in this role?
-
Timely escalation of significant issues to Anna Gibson (Global IP) and/or other senior executives, as appropriate
-
Influencing senior management to understand and buy into IP initiatives and proactively engaging crossfunctionally to maintain relevant information flow
-
Determining best approach to achieving commercial objectives and effecting change by overcoming
organisational, cultural and other barriers
What are the key challenges faced by this role in meeting goals/objectives?
-
Provide prompt and accurate advice to numerous internal stakeholders in a pragmatic, clear and concise manner
Demonstrate a personal commitment to quality, responsiveness and attention to detail
Ensure strong communication, negotiation and drafting skills are practiced and maintained
Act autonomously and effectively prioritise competing matters
IP budget cost management – including accurate tracking and forecasting of expenditure
Ability to communicate and engage quickly and accurately across a global organization
Key Relationships (Who does the role interact with?)
-
-
Internal
External
-
-
All members of Legal and Governance
Executive Team including Senior Executives and Business Unit Heads
Brand and NPD teams
External legal firms and trade mark attorneys (TWE has a network of over 100 agents
managed through a ‘central hub’ firm based in Melbourne)
Regulatory authorities including trademarks offices
Customers, suppliers and other brand owners
Qualifications and Experience:
Qualifications/
Memberships:
Experience,
Competencies &
Skills:
-
Juris Doctor and California bar membership
-
High calibre candidate with at least 3-5 years’ experience in managing global intellectual
property portfolios within either a law firm or trade mark attorney firm
-
Trade mark searching skills to effect brand clearance globally
Experience advising on infringement risks, risk mitigation and the management of related
disputes
IP contract negotiation and drafting
Familiarity with wine and alcohol laws and regulations – focus on the US
Understanding TTB’s labelling requirements and the Certificate of Label Approval (COLA)
application process
-
Demonstrated ability to learn quickly, to understand the business and provide fast effective
legal solutions to commercial problems
-
Demonstrated commercial acumen and a straight forward pragmatic approach with excellent
interpersonal and communication skills
-
Ability to act autonomously as required
-
Excellent leadership and engagement skills
-
Strong communicator, both technical and business
-
Demonstrate a strong sense of accountability and urgency
-
Demonstrate an ability to work under pressure, to manage a number of competing matters and
stakeholders and to be an effective member of a global team
Our Growth Behaviours
Be Focussed
What does it look like?
We believe success comes from
focusing on the most important things

Creating clear priorities and sticking to them

Allocating time and effort to these priorities
What does it look like?
Belief

Inspiring consumers to choose our wines
We believe success comes from
believing in what we do. Actions come
from belief.

Inspiring colleagues to believe in themselves

Inspiring customers and partners to have confidence and invest with us

Staying true to our Company vision
What does it look like?
Trust
We believe trust is fundamental to
success.

Showing positive intent

Acting authentically and with integrity

Holding yourself & others accountable

Giving feedback

Actively listening
What does it look like?
Collaborate to Win
We believe by genuinely working
together, we will win.

Working together to achieve shared goals

Deep collaboration to achieve the same objective

Sharing knowledge, learning together and building consensus

Collaborative problem solving

Letting go of personal agendas in the interests of others
First name: Anna
Role description developed by:
Last name: Gibson
Position title: Head of IP
Date: 2017