Associate / Senior Associate (Trade Mark Attorney) - London or Cambridge

Taylor Wessing's UK Brand Protection practice sits within their 75-strong UK Technology IP & Information (TIPI) group. The Team members are located in their London, Liverpool or Cambridge offices, with no difference between the type of clients and nature of work undertaken in each office. 

The brands practice is part of their wider international TIPI practice which is one of the most highly respected around the world. Due to the strength and depth of their expertise, Taylor Wessing has an outstanding reputation in the field of IP and IT. 

The successful candidate will work with a high degree of autonomy but will work closely with the partners and other senior team members. They will be instructing and supervising more junior attorneys, trainee trade mark attorneys and paralegals. 

• Managing national and international trade mark portfolios and providing high quality holistic brand management support.
• Handling trade mark conflicts and registry disputes, including advising on strategies to defend, prosecute and settle oppositions, cancellation and revocation actions.
• Coordinating high volume/standard infringement disputes which may be related to registry actions, including preparing and sending cease and desist letters, dealing with follow up correspondence, negotiating settlements (working alongside solicitor associates if the dispute becomes more contentious and litigious).
• Conducting and advising on trade mark availability searches, using appropriate online tools and through search agents.
• Advising clients on registrability of trade marks and recommending cost-effective registration strategies.
• 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, including instruction of investigators.
• 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 detailed portfolio audits to identify gaps and discrepancies, presenting findings in a report along with recommendations.
• Advising on and handling domain name/company name complaints.
• Instructing and managing work of foreign attorneys, including critically reviewing their invoices before approval.
• Supervising the review of watch notices and advising on possible oppositions.
• 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 (including liaising with specialist trade mark billers and credit control teams).

Key Responsibilities

• Proactive contribution to business development, offering thought leadership and building the profile of the firm in this area, e.g. building and using a network of contacts, writing articles and securing their publication, attending industry events and being actively involved in industry organisations, public speaking including webinars and our annual TW Brands Forum event.
• Assisting partners to develop and strengthen existing client relationships and build new ones.
• Participation in client pitch preparations and attending pitch meetings
• Working with partners on issues of pricing and giving (and managing compliance with) cost estimates for filing, recordal, clearance or other projects.
• Volunteering ideas to improve business practices.
• Actively contributing to internal know how and at team meetings, e.g. giving internal training, reviewing cases for internal discussion sessions.
• Being a supervisor for trainee trade mark attorneys and providing career guidance and development to help them through the CITMA qualification process.

Knowledge, Skills and Experience

The role is intended to be a mid to senior trade mark lawyer/attorney role, perhaps up to about 10 years PQE (but this will not be determinative). There is no need for a client following.

We are looking for a candidate experienced with working autonomously and directly with clients to manage their portfolios in a wide range of industry sectors and capable of managing, supervising and developing a team. One or more of those portfolios will be reasonably substantial and active.

Experience of handling cases at the UKIPO and EUIPO is essential, as is working with foreign associates. Any experience working in an in-house trade mark department of a brand owning company could be useful but is not required. Candidate should preferably be a CITMA qualified attorney, but other qualifications will be considered.

The following skills are essential:

• A real enthusiasm for trade mark law, a passion for brands and self-motivation.
• Sound judgment on merits and risks of claims, reflecting experience and commercial reality.
• Good oral and written communication and advocacy skills.
• Strong attention to detail and accuracy in work.
• Strong academics and technical ability.
• Well organised and ability to prioritise and manage their own high volume workload
• Commercially astute and practical.
• Ability to quickly engender trust and rapport with team members and many different types of clients.

If you're interested in the role, please contact Hannah Jackson [email protected] / 020 3077 7262 with your CV/details.

Visit website Email