Senior Associate (Trade Mark Attorney), Liverpool (Permanent)

The Team: 

Our UK Brand Protection practice sits within our 75-strong UK Technology IP & Information (TIPI) group. The team is split between our London and Liverpool offices, with no difference between the type of clients and nature of work undertaken by the two teams.  The brands practice is part of our wider international TIPI practice which is one of the most highly respected around the world. Due to the strength and depth of our expertise, Taylor Wessing has an outstanding reputation in the field of IP and IT.  

The team advises global clients on a wide range of IP issues through the full lifecycle of a business, and across a large variety of matters.  Our international Brand Protection practice is not just one of the largest practices of its type, it is also among the top rated, with a major international trade mark filing and portfolio practice that is strategically core to the firm. Taylor Wessing has been consistently ranked Band 1 for Brand Management in Legal 500 and top tier by WTR1000, with a number of team members individually identified as leaders in their field.

This, together with the variety of the brands we represent across all business sectors, means that we have outstanding experience in every area of trade mark and design law. By integrating all aspects of trade mark and design practice into one team, we provide a full IP service, advising not just on clearance, prosecution and portfolio management, but also anticipating and handling disputes and litigation. Advising clients ranging from those with extensive international portfolios to SMEs and start-ups, we have an excellent track record in successfully resolving high-profile and complex brand disputes throughout Europe and Asia.  We have recently added core IP/IT strength to our Dubai office and also offer full brand protection services across the MENA region. 

Knowledge, Skills & Experience: 

The role is intended to be a mid to senior trade mark assistant/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.

Principal Responsibilities: 

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. It is intended they would be heading the Liverpool team of associates and paralegals, reporting to the head of the UK brand protection portfolio practice.  

• 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.
• 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). 

Know How and Business Development:

• 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.
• 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. 

Working Pattern: Taylor Wessing currently operates a hybrid working pattern, with a minimum of three days in the office each week

For a discussion about the role, call Hannah Jackson, Senior Recruitment Manager, on: 020 3077 7262 / 07702 805467.