Counsel, Brands Legal


20 days ago


London & South East






5th Mar 2020





Role Synopsis:

  • Brands are ever present and prominent in all that BP does around the world. BP’s brands are highly valuable business assets, many of them being house-hold names.
  • Through new ventures and technologies, BP is embracing the dual challenge of meeting the world demand for more energy, yet delivering it with fewer emissions. In doing so, BP will be expanding its portfolio of brands.
  • A newly qualified full time lawyer is required to join the Brands Legal team, based in London.
  • Brands Legal is a specialist team that provides global support to the whole of the BP Group in matters relating to the protection of trade marks, designs and copyright.

The successful candidate will be expected to be able to advise in relation to any or all of the above areas, with a primary focus on the clearance, prosecution and enforcement of trade marks.

Key Accountabilities:

  • Providing commercially focussed advice on the clearance and protection of trade marks to all businesses within the BP Group of Companies.
  • To conduct efficient trade mark clearance searches using a variety of services and sources.
  • Managing the prosecution of domestic, international and foreign trade mark applications, including responding to office actions.
  • Evidence gathering, to demonstrate use of trade marks.
  • Monitoring of third party trade mark applications via a watching service.
  • Managing online take-downs of domain names and email addresses (used in fraud).
  • Supporting senior legal counsel with trade mark opposition and enforcement cases (including anti-counterfeiting).
  • Supporting senior legal counsel in providing strategic advice on the protection of trade marks, to clients from across the Group.

Collaboration with trade mark paralegals to provide efficient and effective processes.

Essential Education:

  • Qualified Chartered Trade Mark Attorney or Qualified Solicitor.

Essential Experience and Job Requirements:

  • Experience/knowledge in the legal aspects of trade mark clearance and protection.
  • Excellent interpersonal and communication skills. This role requires engagement with businesses across BP.
  • Experience managing external service providers.
  • Experience of disputed matters with third parties relating to trade marks.
  • Experience of managing cases at the UK IPO.
  • Experience of working in Intellectual Property, in a law firm, or in-house legal team.
  • Ability to apply sound business judgment to provide pragmatic legal solutions.
  • Ability to prioritize and work in a fast paced and rapidly evolving environment.
  • Ability to build and maintain positive relationships with colleagues and clients.
  • Effective use of impact and influence.
  • Takes initiative on improving service delivery.

Proven ability to work as part of a team, demonstrating flexibility to support others in the team at times of high volume workload to achieve the best results.

Desirable Criteria:

  • English law qualification preferred.
  • A working knowledge of the laws relating to design rights.
  • Adaptability to working in a modern business environment, including experience of working in a paperless office.

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