Senior Associate, Brand Protection and Trade Mark Prosecution

Central London, United Kingdom
Jan 16, 2023
Feb 15, 2023
Contract Type

We are looking for an experienced UK Chartered Trade Mark Attorney, with at least 7 years' post-qualification experience to join our busy and exciting trade marks team.  We are responsible for the brands of many high profile clients in the media, entertainment and technology sectors.   This is an exciting opportunity for someone with strong technical skills and a real desire to be an integral part of the growth and development of an ambitious, dynamic and enthusiastic team. 

Key responsibilities will include:

  1. Advising clients on all aspects of the protection and enforcement of their trade marks, designs and copyright, unregistered trade mark rights, custom seizure matters, filing strategies and related commercial matters, including:
    • Advising clients in relation to brand protection and filing strategies.
    • Advising clients in relation to design and related soft IP protection and filing strategies, and enforcement.
    • Conducting availability and clearance searches (including registered and unregistered searches, and title searches) and providing advice to clients, including risk mitigation strategies.
    • Prosecuting trade mark applications in the UK, EU and globally, including preparing observations and evidence in response to absolute grounds objections.
    • Managing and monitoring watching services, and providing appropriate advice in relation to potential disputes.
    • Advising and acting for clients in relation to brand disputes, including oppositions, invalidities and revocations.
    • Negotiating and concluding settlements, and drafting settlement and coexistence agreements.
    • Enforcing our clients' trade mark, design and related soft IP rights, including preparing pre-action correspondence and third party platform take down requests.
    • Preparing and drafting agreements including assignments and licences.
    • Acting in relation to domain disputes, and the procurement of domains for clients.
    • Conducting and supervising legal research.
    • Monitoring deadlines and ensuring that they are met in good time.
  2. Supervision, delegation of work to, and management of more junior team members including in relation to the above activities.
  3. Playing a key management and supervisory role within the team – including billing, client relationship and matter management processes, appropriate matter allocation and providing mentoring, training and career development support to more junior members of the team.
  4. Engaging in department growth, strategy and direction.
  5. Playing a key role in business development and marketing activities, attending industry events on behalf of the firm
  6. Developing strong relationships with other members of the department and more widely within the firm.
  7. Working and liaising directly with clients.

About you

You will be an accomplished and experienced attorney.  You will be organised, proactive, engaging and will work efficiently and independently.   You will also be a good communicator.  You will be a team player, and enjoy working with and managing others.  You will have a real interest and enthusiasm for our firm's core sectors.

You will also have:

  1. 7+  years' experience as a qualified UK Trade Mark Attorney.
  2. Strong academic/educational background to at least undergraduate degree level.
  3. Expert knowledge, understanding and working experience of UK and EU trade mark, design and related soft IP law.
  4. Strong working knowledge of UKIPO, EUIPO and WIPO trade mark and design procedure.
  5. Experience managing and organising others, and running and implementing department work processes.
  6. A positive attitude and engaging working style.
  7. A desire to learn, develop and build a team.

We are committed to increasing the diversity of our teams and we welcome and encourage applications from groups currently underrepresented in our workforce and across the legal profession.