Annick Staudenmann

Under the direction and supervision of Head of Brand IP, develop, protect, maintain, enforce & defend the Ferring brand-related IP portfolio in line with the evolution of the Ferring businesses. Advise and support HQ functions and local business stakeholders in enhancing and extracting value from the brand related IP portfolio:

• Leading Brand IP Operations & Processes (IP Management database, legal systems & providers, including law firms management quality and costs, cross functional process design & implementation, launch excellence, leveraging legal tech solutions, process design and implementation)
• Trade mark, industrial design and domain name portfolio management and enhancement, including:
• Supporting the generation of, and capturing, internally generated IP.
• Conducting and advising on clearance and availability for use/registration searches.
• Trademark portfolio management from filing to grant and maintenance. Ensuring timely and appropriate protection for brand IP including oppositions and other official actions.
• Advise and support timely and appropriate responses by local regulatory teams and the trade mark owner in relation to parallel trade, including education, updating and implementation of relevant SOPs.
• Advise and support business development and distribution activities.
• Under supervision of Director, Group Trademarks, management of pre-contentious and contentious enforcement and defense activities, including negotiating/drafting settlement agreements
• Supporting the Head of Brand IP in Parallel Trade notification management including process improvement, internal communication workflow with various stakeholders; legal analysis of the notification; assessment of legal objection and response to parallel traders’ notifications when appropriate
• Brand IP education including trade mark best practices and parallel trade

Reporting to the General Counsel R&D and Brand & Marketing Properties, led a team of passionate and experienced Trademark Paralegals and IP Assistants within Nestlé Legal:

• Ensure that at a strategic level, the Legal IP Support Team is aligned with the Group Legal priorities and activities.
  
• At the operational level, contribute to drafting and implementing the legal strategy in view of protecting and defending Nestlé's brands by actively and effectively co-piloting the Trademark in Action (and others) initiatives.
• Project Management supporting Legal IP
• Data management & data integrity for Nestlé's trademarks and industrial design portfolio (around 100.000 titles)
• Influence the team performance by challenging the trademark and industrial design registration and defense processes, identifying optimization opportunities.
• Ensure best practices are reinforced and implemented - Head of Best Practices working group, reviewing law and regulation amendments, analyze and draft recommendation for the Nestlé Group of entities.
• Develop and coach team members for personal and professional growth. Make sure that resources and capabilities are available within the Legal IP Support Team

• Project management and legal advice to business partners including various trademark/copyright/industrial matters with licensee.
• Coordination of trademark and industrial filings for the whole department.
• Responsible for the training and coaching of the department’s apprentice as well as new comers.
• Trademark availability searches (screening search, full search), analyze of the results and subsequent advice to the marketing units.
• Trademark and industrial design prosecution from filing to registration (including response to official objections either based on absolute or relative grounds, defensive oppositions, etc.)
• Trademark right enforcement (watching publication of potential conflicting trademark, analyze of the potential risk of confusion with prior marks and filing oppositions when necessary, negotiations with third parties).
• Imitations and look-alike : analyze of the market place situation, warning letters to infringing parties, initiating infringement actions when early dispute resolution failed v

Handling of trademark Portfolio for the EEMA (Eastern Europe, Middle East & Africa) EU regions (European Union, Switzerland, Norway) including:

• Competitive intelligence : competitor monitoring and report to stakeholders.
• Responsible for the onsite training of the legal assistant.
• Designing and drafting internal policies and guidelines for filing & prosecution activities for the group
• IP Asset management system implementation key stakeholder (database design, implementation & maintenance)
• Trademark availability searches, results analysis and subsequent advice to the business
  partners.
• Set trademark protection strategies using the best available options (national trademark, WIPO, EUIPO).
• Filing & Prosecution : Responsible for all process from filing to registration.
• Oppositions & litigations
  

Temporary assignment:

• Audit of customer contracts/agreements. Preparing and sending missing contractual documents like distribution agreement, addendum of initially negotiated terms, etc.
• Database management and real-time update.
• Assisting in-house lawyers in their respective roles.

IP Support :

• Trademark renewals and assignments.
• Trademark and Industrial Design registration process from filing to grant
• Oppositions against infringing trademarks at an administrative level

Project Lead - 6 weeks mission at Nestlé Purina Petcare, USA :

• Integration of trademark function within Nestlé Legal following acquisition of petfood business from Ralston Purina by Nestlé S.A.
• Database integrity change, clean up & assessement as well as data transfer into Nestlé's legal systems.
• Training Legal team members to Nestlé's principles, guidelines, Legal IP strategies & best practices.
• Training of Paralegal team following Nestlé's principles.