Trade Mark Attorney

6 days ago

London, Greater London, United Kingdom myGwork Full time
Job Summary

We are seeking a seasoned Trade Mark Attorney with a passion for brand protection to join our team as a Brand Protection Specialist. This role offers an exciting opportunity to work with a wide range of industry sectors, managing substantial and active portfolios while supervising and developing a team.

About the Role

This is a mid to senior trade mark lawyer/attorney position requiring around 10 years PQE. The successful candidate will have experience working autonomously and directly with clients to manage their portfolios, handling cases at the UKIPO and EUIPO, and working with foreign associates. CITMA qualification is preferred but other qualifications will be considered.

Key Responsibilities:
  • Manage national and international trade mark portfolios, providing holistic brand management support.
  • Handle trade mark conflicts and registry disputes, advising on strategies to defend, prosecute, and settle oppositions, cancellations, and revocation actions.
  • Coordinate high-volume infringement disputes, preparing cease and desist letters, dealing with follow-up correspondence, negotiating settlements, and working with solicitor associates when necessary.
  • Conduct and advise on trade mark availability searches using online tools and search agents.
  • Advise clients on registrability and recommend cost-effective registration strategies.
  • Filing and prosecuting trade marks worldwide, including the UK, EU, and Madrid system.
  • Gather and present witness statement evidence for acquired distinctiveness, reputation, or infringement purposes, including instruction of investigators.
  • Draft legal submissions for UKIPO or EUIPO proceedings and handle UKIPO hearings, either through advocacy or counsel.
  • Advising on assignment or recordal projects and implementing them efficiently.
  • Conduct detailed portfolio audits to identify gaps and discrepancies, presenting findings in a report with recommendations.
  • Advise on and handle domain name/company name complaints.
  • Instruct and manage foreign attorneys, reviewing their invoices before approval.
  • Supervise watch notice reviews and advise on possible oppositions.
Requirements
  • A genuine enthusiasm for trade mark law and self-motivation.
  • Sound judgment on claim merits and risks, reflecting experience and commercial reality.
  • Good oral and written communication skills.
  • Strong attention to detail and accuracy.
  • Strong academics and technical ability.
  • Well-organised with the ability to prioritise and manage a high-volume workload.
  • Commercially astute and practical.
  • The ability to engender trust and rapport with team members and various client types.
Benefits

This role comes with a competitive salary of approximately £80,000-100,000, hybrid working arrangements, enhanced maternity and paternity leave, and a comprehensive flexible benefits package available. Our culture values diversity, inclusivity, and respect, and we continue to build a team that exemplifies these values. The way we work is focused on creativity, excellence, integrity, responsibility, respect, and teamwork, with a commitment to continuous learning and improvement.

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