Trade Mark Attorney

The Chartered Institute of Trade Mark Attorney's; Greater London; On-site; GBP 45,000 - 60,000; Full time

Job summary

The Chartered Institute of Trade Mark Attorney's in London is seeking a talented newly-qualified Trade Mark Attorney to join our friendly Trade Mark team. You will handle a varied caseload for domestic and international clients, including filing, oppositions, and enforcement across UK, EU, and other territories, collaborating with overseas attorneys.

The role offers an excellent benefits package and a supportive environment with opportunities for professional development and involvement in firm

Qualifications

• Newly-qualified Trade Mark Attorney with up-to-date UK/EUIPO practice knowledge.
• Strong client-facing and advisory capabilities across IP matters.

Responsibilities

• Liaising with in-house and overseas attorneys, IP managers and clients.
• Advising on registration, use and exploitation of trade marks to protect brands.
• Identifying new trade marks and assessing registrability in relevant territories.
• Devising international trade mark filing strategies and managing applications (UK, EU, WIPO).
• Responding to official objections and coordinating with overseas attorneys on objections elsewhere.
• Conducting searches to assess availability, arranging watching services, and reporting results.
• Negotiating settlements, recording assignments and handling licences recordal.
• Handling oppositions, invalidity and revocation proceedings, and hearings before relevant bodies.
• Providing strategic advice on brand protection, online brand issues and domain disputes.
• Supporting business development with the firm’s marketing team.

Job description

We have an opportunity for a talented and ambitious newly-qualified Trade Mark Attorney to join our friendly Trade Mark team in our London office.

The role will provide a varied and interesting caseload, working with a variety of direct domestic and international clients from a wide range of commercial sectors, and overseas attorneys from all around the world.

Typical responsibilities include but are not limited to:

• Liaising with in-house attorneys, overseas attorneys, IP managers, brand managers, business owners and individuals
• Advising clients on the registration, use and exploitation of trade marks to ensure successful protection of the identity and integrity of their brands
• Working with clients to identify new trade marks, and ensuring that any proposed new trade marks are both capable of, and available for, registration, in the territories of interest
• Advising on, and devising, international trade mark filing strategies
• Preparing and filing trade mark applications in the UK, EU and via WIPO, and preparing and sending trade mark filing instructions to our colleagues in Germany and Norway, and to overseas attorneys in other territories
• Responding to official objections to clients’ UK, EU and/or International trade mark applications, and working with overseas attorneys in relation to objections to clients’ applications elsewhere
• Carrying out/arranging searches to determine whether a proposed trade mark is available for use and registration, and advising clients accordingly
• Arranging trade mark, domain name, company name, Applicant and other watching services, and reviewing and reporting the results
• Preparing and recording assignment agreements
• Attending to the recordal of licences and changes of owner name and/or address
• Handling oppositions, invalidity and revocation proceedings, and appeals before the UKIPO and EUIPO, and representing clients at hearings
• Negotiating settlements and preparing co-existence agreements, consent agreements and letters of undertaking
• Advising clients in relation to matters involving trade mark infringement and/or passing off
• Providing clients with advice and assistance in relation to online brand protection, domain name disputes, and matters before the Company Names Tribunal
• Conducting Intellectual Property audits and due diligence for clients
• Providing clients with commercially-relevant and strategic advice for managing trade mark portfolios
• Taking an active approach in business development opportunities with the support of the Firm’s marketing and business development department

As well as a competitive salary and excellent benefits package, we offer a relaxed, friendly, sociable environment in which to work.We have active Charities and EDI Committees who run regular events, alongside a whole calendar of social, wellbeing and club activities which take place throughout the year. Our attorneys at all levels also have opportunities to be involved in committees relating to business development, training, environmental and social responsibility and AI.

We have a reputation for outstanding on-the-job training, evidenced by the nationally-recognised prizes awarded to our trainees for their achievements in professional examinations. We have a dedicated Professional Support Attorney, a qualified attorney with many years’ experience, who oversees training within the firm.