Trade Mark Attorney

Overview

We are looking for an experienced Chartered Trade Mark Attorney to join our IP & Commercial team. Working within a team of 4 Partners you will have the opportunity to work directly with clients, supporting them in protecting their intellectual property rights in the UK and internationally.

It is a hybrid role with three days (Tuesday to Thursday) in our London Bridge office with enviable river views.

The role requires a high degree of personal organisation, reliability and accountability. You must be able to manage matters proactively, meet deadlines without close supervision and communicate clearly with both colleagues and clients. You will be expected to keep fee earners updated on progress, flag risks early and take ownership of tasks from start to finish.

This is a broad role with opportunity to get involved across a range of trade mark issues in a variety of sectors. You will have the opportunity to develop both your technical expertise and client relationship and business development skills, while providing consistent, constructive support to more junior members of the team.

We support well-known UK and international brands with the protection and enforcement of their IP rights.

Our clients include individuals, entrepreneurial businesses and large corporates at the forefront of innovation within a variety of sectors including:

• Retail, leisure and hospitality
• Media and entertainment, including interactive entertainment
• Advertising and marcoms
• Fashion and beauty
• The arts
• Technology, including fintech

Our trade marks practice focuses on clearance, prosecution, portfolio management and trade mark disputes.

We provide our clients with advisory services covering the adoption, clearance and registration of trade marks and registered designs in the UK, EU and internationally by way of our trusted network of IP specialist firms.

We regularly enforce our clients' rights by way of actions in the IPO, domain name proceedings (including UDRP), Company Names Tribunal proceedings, infringement litigation and other forms of dispute resolution. We are also co-ordinate international disputes and are experienced in anti-counterfeiting matters, in particular, the handling of customs seizures for global brands.

• A US based technology company on a long running trade mark dispute with a telecoms company, including acting in multiple cancelations and oppositions.
• An internationally recognised sculptor on a trade mark infringement claim against a global manufacturer.
• International computer games corporation on the clearance, filing and enforcement of trade marks in the UK, EU and internationally.
• A sustainable home and personal care brand offering refillable, plastic-free products on a trade mark dispute with an identically named business that was also focused on resolving the problems associated with plastic waste.

Case management and communication

• Managing your own caseload and ensuring all trade mark deadlines are monitored and met.
• Proactively updating instructing partners and clients on progress, next steps and any emerging issues.
• Ensuring accurate time recording and prompt billing support.
• Liaising effectively with other team members to ensure smooth coordination on active matters.

Technical and formalities work

• Advising on trade mark and design filing and strategy;
• Overseeing all aspects of trade mark and design portfolio management including: preparation of costs quotes; trade mark and registered design applications; recordals and renewals; citations, examination reports, watch notices and status reports.
• Preparing clearance search reports;
• Drafting trade mark specifications, including technically correct limitations when required;
• Drafting confirmatory trade mark assignments;
• Preparing filing particulars and opposition particulars for instructing counsel internationally;
• International prosecution of trade marks and designs in national registries and at WIPO;
• Managing opposition and cancellation actions and assisting with settlement negotiations;
• Managing the collection and collation of evidence in support of oppositions and cancellation actions;
• Drafting Statements of Grounds, Defences and written submissions for use in UKIPO opposition and cancellation actions;
• Drafting witness statements for use in UKIPO opposition and cancellation actions;
• Drafting inter partes correspondence in relation to the withdrawal or amendment of trade mark applications or registrations.
• Ensuring all work is checked carefully before circulation and maintaining high standards of accuracy, completeness and presentation.

Teamwork, supervision and internal processes

• Working collaboratively with colleagues and contributing positively to team culture.
• Using internal tools such as document automation, the precedent bank and/or process guides.
• Supporting the supervision of junior colleagues, ensuring they receive clear instructions, constructive feedback and timely guidance.
• Following internal procedures, maintaining orderly and up to date file…