Domain Manager/ Senior Trademark Paralegal

Domain Manager/ Senior Trademark Paralegal

Zug, CH, 6300

SUMMARY OF THE JOB

The purpose of the position is to manage the Holcim Group Internet Domains and to support the Associate General Counsel Trademarks in managing the global trademarks portfolio of the Holcim Group.

As Domain Manager, the responsibilities include safeguarding domain protection, maintaining brand integrity, and ensuring consistency.

This involves:

● Managing the Domain name portfolio of Holcim, ensuring cost efficiency and alignment across the various functions involved.

● Collaborating closely with the Branding/Marketing team to develop and manage a domain strategy aligned with the branding strategy of Holcim Group.

● Aligning internet domains and trademarks.

● Working alongside the technical team to enhance security and protection against cyber threats for domains.

● Ensuring budget efficiency in domain and trademark management.

● Migrate the management of domains from Marketing/ Branding to Legal/ IP.

As Senior Trademark Paralegal:

● Providing administrative support to Associate General Counsel Trademarks and the IP department in the Trademark portfolio management.

● Collaborating with Marketing, Branding, Tax, M&A teams to optimise the trademark portfolio of the Holcim Group.

● Supporting the implementation and further ongoing maintenance of the trademark portfolio management software.

● Overseeing cost efficiency.

● In collaboration with Associate General Counsel Trademarks manage external counsel, monitoring progress and ensuring timely deliveries.

MAIN ACTIVITIES / RESPONSIBILITIES

The main activities as Domain Manager:

● Corporate Domain Naming and Alignment: Ensure that corporate domain names are strategically aligned with Holcim's overall objectives.

● Domain Portfolio Management: Maintain a comprehensive inventory of all domains owned by Holcim, including primary domains, variations, and defensive registrations.

● Domain Acquisition Strategy: Develop a clear strategy for acquiring new domains that align with Holcim's brand, products, or future initiatives, potentially through secondary market purchases or auctions.

● Brand Protection: Proactively register domains to protect Holcim's brand from cybersquatting, phishing, and other malicious activities, including registering variations and relevant extensions.

● Legal Compliance: Stay informed about domain regulations, registration requirements, and trademark laws in relevant jurisdictions to ensure compliance with local laws and regulations.

● DNS Management: Ensure high availability, reliability, and security of domain services through robust Domain Name System (DNS) management, potentially involving reputable DNS providers and implementing DNSSEC for enhanced security.

● Renewal and Expiry Management: Develop processes for timely renewal of domain registrations to prevent accidental expiry and potential loss of domains. Proactively monitor expiration dates and manage renewals based on current use or needs to keep domain names.

● Cybersecurity Measures: Implement security measures to protect domains from unauthorised access, hijacking, and DNS manipulation. This includes measures like multi-factor authentication (MFA), regular security audits, and monitoring for suspicious activities.

● Monitoring and Analytics: Use analytics tools to monitor domain performance, traffic patterns, and related metrics. Utilise this data to optimise domain strategies, identify trends, and assess the effectiveness of domain investments.

● Coordination with IT and Marketing Teams: Collaborate with IT, marketing, legal, and other relevant teams to ensure domain management aligns with broader business objectives and strategies.

The main activities as Senior Trademark Paralegal:

● Trademark Docketing: Maintain trademark docket and the timely and precise entry of trademark data into trademark management software; Deadline management.

● Correspondence: Liaise with external counsel and service providers on administrative matters; Maintain IP records and incoming and outgoing correspondence.

● Trademark Portfolio Management: Support filings of trademark applications, prosecution and oppositions.

● Trademark Clearance: Independently conduct trademark searches on subscription database; analyse and summarise external trademark search.

● Trademark Watching: Review trademark watch notices and make proposals for filing trademark oppositions/invalidation actions.

● Trademark Renewal and Maintenance: Liaise with internal stakeholders and collect trademark renewal decisions. Manage ownership change recordation with the relevant registries.

● Trademark Reporting: Produce and customize trademark reports for management and internal stakeholders.

● Document Management: Produce and execute various documents required for the trademark portfolio management process, such as Powers of attorney and Declarations of use. Arrange notarization, legalization and Apostilles.

Key interfaces, stakeholders and relationships:

● Corporate Marketing, Tax and Branding teams

● Business segments in corporate functions and in countries

● Corporate, regional and country and innovation teams

PROFILE REQUIRED

Level of education/ qualifications normally required:

● University degree (Bachelor or Master) in Computer Science and/or Paralegal qualification.

o Additional certifications related to domain management, cybersecurity, and IT governance would be beneficial.

Alternatively,

● Experience in an IP Paralegal role with strong affinity to IT, willing to deep dive into domain management

● University degree in Computer Science, willing to deep dive into trademark legal

Specific work experience (Domain Manager):

● Experience in DNS management and domain portfolio management is crucial. This could include working in roles such as DNS administrator, domain manager, or cybersecurity analyst.

● Familiarity with domain registration processes, domain auctions, and domain lifecycle management is essential.

● Knowledge of DNSSEC implementation and familiarity with reputable DNS providers.

● Strong analytical skills to interpret domain-related metrics and optimise domain strategies.

● Excellent communication and collaboration skills to coordinate with IT, marketing, legal, and other relevant teams.

● Familiarity with relevant regulations and laws governing domain management and cybersecurity.

● Proven ability to align domain management activities with broader business objectives and strategies.

Specific work experience Trademark Counsel Paralegal:

● At least 2-3 years of experience in trademark docketing and prosecution

● Experience with IP search and management tools

● General knowledge of global trademark filing and prosecution procedures

● Proficiency in using official and subscription trademark databases (USPTO, EUIPO, UKIPO, IGE, TMVIew, Serion etc.).

Knowledge and skills:

● Strong attention to detail and proven skill in management of time limits

● Pragmatic and problem-solving attitude, with experience in managing dynamic, complex and dynamic environments

● Excellent interpersonal and communication skills with the ability to collaborate effectively and positively with stakeholders at all levels

● Team player with a high degree of self-motivation and an intrinsic interest in exploring and developing new topics and competencies

● Excellent oral and written communications skills

Behavioural competencies:

● Ethical Leadership: Given the sensitive nature of domain management, trademarks management and cybersecurity, ethical leadership is paramount.

Leadership and managerial abilities:

● Communication: The ability to communicate effectively with team members, stakeholders, and senior management is essential.

● Strategic Thinking: A strategic mindset is crucial for aligning domain management

● Decision-Making: Strong decision-making skills are necessary for evaluating options, assessing risks, and making informed decisions in a timely manner

● Problem-Solving: Strong problem-solving skills are necessary for identifying root causes of issues, developing creative solutions, and implementing effective remediation measures.

Language skills:

● Advanced English drafting and writing skills particularly involving complex legal, technical and commercial concepts

● Other languages, in particular German, is an advantage

Mobility requirements (time spent travelling internationally, nationally etc.):

● <10% time travelling