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Trade Mark Attorney

The successful candidate will be advising a range of exciting clients, from start-ups to global brands, many of which are household names. They will work closely with our wider IP team (contentious and non-contentious), and they will be expected to be able to work with a high amount of autonomy and engage directly with clients.

Our trade mark and IP team advises clients on the full range of IP issues including trade mark clearance, registrations and renewals, prosecution and management of registered rights and domain names, disputes in contentious IP matters , across a number of industry sectors.  You will be working in a team with a number of partners across contentious and non-contentious practice areas and the trade mark team has dedicated trainee/paralegal as well as PA support.

Department Trade Marks

Reporting to Partner

Based Either fully remote with occasional (monthly) travel to our London office or hybrid (partly remote and partly office based in either London or Cardiff), London

Flexibility Occasional travel to UK offices

Contract Type Permanent, Full time

Hours Monday – Friday 9-5.30pm or 9:30-6:00pm

“We are looking for an experienced Chartered Trade Mark Attorney to join our busy team, and hit the ground running on an active case load of trade mark and wider IP matters.”

Skills and Experience:

  • Conducting and co-ordinating trade mark clearance searches;
  • Advising on brand strategy, use and registrability of trade marks;
  • Preparing national and international filing strategies;
  • Filing and prosecuting trade mark and design applications around the world;
  • Managing and reporting watch notices;
  • Handling objections, oppositions and cancellation actions;
  • Preparing evidence and legal submissions to support registration, oppositions and cancellation actions, and other disputes;
  • Preparing and negotiating co-existence and other agreements;
  • Instructing, overseeing and co-ordinating the work of overseas attorneys;
  • Handling assignment, licence and security of interest and recordal projects;
  • Providing ad-hoc advice notes;
  • Handling and advising on IP due diligence matters;
  • Managing cost estimates effectively and billing on a monthly basis; and
  • Helping to strengthen and develop relationships with clients and generate new business for the Firm.

Person Specification:

  • Chartered Trade Mark Attorney with at least 5 years’ post qualification experience
  • Exceptional communication, presentation and problem solving skills, both verbal and written with excellent interpersonal skills and an ability communicate professionally and respectfully with all you interact with;
  • Proven multi-tasker, who can demonstrate the ongoing use of initiative;
  • Team player but self-motivated and able to work autonomously and pro-actively. We would expect you to play an active role within the team and support other team members during busy times;
  • Used to delivering high quality work often against short deadlines and a proven ability to prioritise and manage a varied workload;
  • Able to demonstrate experience liaising pro-actively with third parties professionally;
  • Excellent time management, organisational and administrative skills;
  • We would expect you to demonstrate an understanding/awareness of good financial health, working capital and regular billing.

    We are an equal opportunities employer and ensure that no applicant or employee receives less favourable treatment on the grounds of gender, age, disability, religion, belief, sexual orientation, marital status, or race.

    Appointment is subject to the appropriate basic disclosure/DBS checks, and satisfactory references.

    Initial interviews will be held remotely via phone and video with final interviews in person where possible (subject to Covid secure guidelines).

    No agencies please.

     

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