Trade Mark Attorney

Dehns; Greater London; Hybrid; GBP 50,000 - 70,000; Full time

Benefits offered by this job

Charities and EDI Committees

Professional training and development

Job summary

Dehns in London is seeking a newly-qualified Trade Mark Attorney to join our dynamic Trade Mark team. The role covers UK, EU and international filings and requires collaboration with domestic and overseas clients and attorneys.

The position is based in London with hybrid working: 3 days in office and 2 days at home, 35 hours per week. Training, support, and strong career development are provided to help you progress within the Firm.

Qualifications

• Newly-qualified Trade Mark Attorney with up to 1 year PQE or equivalent.
• Excellent academic record with at least a 2:1 degree.
• Strong communication, resilience, independence and commercial focus.

Responsibilities

• Liaise with in-house and overseas attorneys, IP managers and clients to protect brands.
• Advise clients on registration, use and exploitation of trade marks.
• Prepare and file UK, EU and WIPO trade mark applications; coordinate with international teams.

Skills

Strong communication

Coachability

Resilience

Independent working

Attention to detail

Commercial sense

Education

2:1 degree (any discipline)

Professional Certificate in Trade Mark Practice (Nottingham Law School)

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.

Reporting to: Assigned Supervising Partner

Location: London

The principal place of business will be the Firm’s London office. The Firm is located on other sites within the UK and Europe; travel to, and working from, these offices will be required from time to time. Our London office is a modern, purpose-built office block centrally located next to The Old Bailey.

Hybrid Working:

The Firm operates a Hybrid Working policy, based on 3 days working in the office, and 2 days working from home. Please note that during the probationary period, to facilitate training, 4 days per week in the office may be required.

Hours of work:

Full-time, 35 hours per week with flexible start and finish times.

Purpose of role:

To work with a range of Partners and Associates/Senior Associates in supporting the Firm’s clients to protect, manage and defend their trade marks.

Main Responsibilities:

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

The Candidate

We welcome applications from newly-qualified Trade Mark Attorneys who have successfully passed the Professional Certificate in Trade Mark Practice at Nottingham Law School, and have up to 1 year’s post-qualified experience working in trade mark legal practice.

Suitable candidates will have:

• An excellent academic record, including a minimum 2:1 degree classification (in any discipline)
• Strong communication skills, both oral and written
• Coachability
• Resilience
• An ability to work under pressure, prioritise to meet deadlines, and multi-task
• An ability to work independently to a high standard
• Strong organisational skills, excellent attention to detail and good interpersonal skills
• A fundamental sense of commerciality – as well as academic excellence, we are also looking for someone with the ability to understand clients’ needs and priorities, and provide commercially-focused advice to help them achieve their goals.

The Offer

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.

About us

Dehns is one of Europe’s leading IP law firms with more than 300 people across 8 offices in 3 European countries. Consistently top tier-ranked by IP and legal directories, our core business for over 100 years has been to obtain and defend intellectual property rights for local and international clients ranging from large, multinational corporations to small and medium sized businesses and private individuals.

Our practical, business-oriented approach to intellectual property helps us to turn inspired thinking into patents, trade marks and registered designs that are valuable commercial assets for our clients.

People are at the heart of Dehns. We care about each and every one of our employees, and work/life balance is important to us. We pride ourselves on our commitment to training, and provide unrivalled support to our trainees and attorneys through to qualification and beyond.

We actively embrace diversity in all its forms – background, identity, experience and thought – and are passionate about providing a workplace in which all individuals can thrive. We strongly believe that diversity enriches our culture and enhances the quality of the work that we do for our clients.

This job description describes the principal purpose and main elements of the job. It is a guide to the nature and main duties of the job as it currently stands. It is not intended as a wholly comprehensive or permanent schedule and may be varied from time to time. It does not form part of the contract of employment.