Role and responsibilities

  • Assiting with advice for trade mark and design filing strategies.
  • Helping to file and prosecute in UK, EU and International (WIPO) trade mark and design applications through to registration and liaising with local agents in relation to national applications worldwide.
  • Managing the renewal and maintenance of clients’ global trade mark and design portfolios.
  • Drafting of assignments, licences, security interests and supervising the changes of name/address at the appropriate Trade Mark Registries and instructing local agents in foreign jurisdictions.
  • Carrying out availability searches and advising on trade mark and design availability for use and registration.
  • Advising clients about filing strategies and trade mark and design use and maintenance issues.
  • Advising clients on and dealing with registry objections and brand conflicts.
  • Handling inter partes disputes before trade mark registries and supervising overseas disputes handled by foreign associates as well as negotiating and drafting settlements agreements.
  • Supervising worldwide trade mark watching programs.
  • Preparing and filing opposition, cancellation and revocation actions.
  • Taking full responsibility for the client portfolio management database (WebTMS) including monitoring deadlines and working with partners and trade mark attorneys to ensure that deadlines are met in a timely manner.
  • Recruiting, supervising and training staff.

Key requirements

  • Law degree / qualified lawyer
  • Strong academic credentials.
  • Intellectual curiosity and versatility.
  • Self-starter with the desire and ability continuously to acquire, build upon and share knowledge.
  • Detail-focused and self-motivated approach.
  • Strong organizational skills, with the ability to manage multiple deadlines.
  • Excellent client relationship skills.
  • Strong commercial/business acumen with the ability to deliver creative and pragmatic solutions and advice.
  • Excellent communication and interpersonal skills, with the ability to interface at all levels to build strong relationships with both internal and external stakeholders.
  • Collaborative team player with the ability to develop and work in a fast paced, intellectually rigorous environment.
  • DESIRABLE – Experience in trademark/ passing off/ IP generally – Masters in IP 

Who we are looking for

  • We are looking for a high quality applicant with strong experience in trade mark and design prosecution to join and help build a growing team.

In addition to strong English language capabilities, being able to work in French, German, Spanish and/or Italian would be an advantage.