Job Description
This is a full-service international law firm, working with clients in the some of the most dynamic industries in the world. Their numerous offices around the globe blend the best of local business, industry and cultural knowledge with international experience, providing acute business experience for their clientele.
Their clients range from promising new start-ups to multinational leaders of industry, with a client base that includes 60% of the world’s top 50 brands.
This law firm’s international Intellectual Property group is one of the most respected around the world. The IP 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.
The successful candidate will work as part of a wider trade mark team and can expect to get involved in (but not limited to):
- 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 our formalities team.
- Filing and prosecuting trade marks on a worldwide basis, including the UK, EU and Madrid system.
- Drafting legal submissions for UKIPO or EUIPO proceedings and handling UKIPO hearings (whether doing advocacy themselves or through counsel).
- 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.
- Reviewing trade mark and EUIPO watch notices to consider possible oppositions.
What is required of you:
Candidates should preferably be CITMA.
The role is intended to be a junior to mid-level trade mark attorney role. You should be experienced with working fairly autonomously and directly with clients to manage their portfolios in a wide range of industry sectors. At least one of those portfolios should be reasonably substantial and active.
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 could be useful but is not essential.