Trade Mark Attorney- Top 20 UK Firm

Location

London

Job type

Permanent

Experience

2-4 years

Salary

Competitive

Reference

912610

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Job description

This UK firm are currently looking for a mid-level trade mark assistant/attorney to join their team in London. Experience of handling cases at the UKIPO and EUIPO is essential, as is working quite extensively with foreign associates. Some experience working in an in-house trade mark department of a brand owning company would be useful but is not essential. You should also preferably be ITMA qualified.

They were named European Trade Mark Team of 2019 by Managing Intellectual Property magazine. This recognises the size and strength of the firms European Trade Mark group. This, together with the variety of the brands they represent across all business sectors, means that they have outstanding experience in every area of trade mark and design law.

The team advises global clients on a wide range of IP issues through the full lifecycle of a business, and across a large variety of matters - from trademarks and designs registration, high profile licensing arrangements, regulatory advice, to representation in patent litigation and advice on patent transactions and other technology related matters.

Their international Trade Marks and Designs team are not just one of the largest practices of its type but it is also among the top rated, with a major international filing practice that is strategically core to the firm. This, together with the variety of the brands they represent across all business sectors, means that they have outstanding experience in every area of trade mark and design law. By integrating all aspects of trade mark and design practice into one team, they provide a full IP service, advising not just on clearance, prosecution and portfolio management, but also anticipating and handling litigation. Advising clients range from those with extensive international portfolios to SMEs and start-ups, they have an excellent track record in successfully resolving high-profile and complex brand disputes throughout Europe and Asia.

In this role you will work as part of a wider trade mark team which will include:

  • Managing international trade mark portfolios with a fairly high degree of autonomy but working alongside partners and supervising more junior trade mark assistants, with support from paralegals and their formalities team.
  • Filing and prosecuting trade marks on a worldwide basis, including the UK, EU and Madrid system.
  • Gathering and presenting witness statement evidence to show acquired distinctiveness, reputation or for infringement purposes.
  • Drafting legal submissions for UKIPO or EUIPO proceedings and handling UKIPO hearings (whether doing advocacy themselves or through counsel).
  • Advising on assignment or recordal projects and implementing them to run within budget, on time and with efficient reporting.
  • Conducting and advising on trade mark availability searches, using appropriate online tools and through search agents.
  • Advising clients on registrability of trademarks and recommending cost-effective registration strategies.
  • Instructing and managing work of foreign attorneys, including critically reviewing their invoices before approval.
  • Reviewing trade mark and EUIPO watch notices to consider possible oppositions.
  • Reviewing and advising on impact of in-use reports and liaising with investigators.
  • Handling negotiation of co-existence and assignment agreements with third parties.
  • Assisting with management of portfolio disbursements, matter billing and client payment for their matters in a timely and efficient manner to help improve matter profitability

For further information, please contact Chris Mayo on 020 7187 7430. Alternatively, please email your CV to chris.mayo@ssq.com.