Trade Mark Attorney
22 days ago
28th Jul 2019
Taylor Wessing is a leading International, full-service law firm, working with clients in the world's most dynamic industries. We are proud of our reputation as a forward-thinking firm, and we support clients wherever they want to do business. Our 32 offices across Europe, the Middle East, US and Asia blend the best of local commercial, industry and cultural knowledge with international experience to provide proactive, integrated solutions for our clients.
Our focus on the industries of tomorrow has enabled us to develop market-leading expertise in Technology, Media and Communications; Life Sciences; Private Wealth and Energy. The firm’s globally renowned expertise in intellectual property and technology underpins its strength in knowledge-based industries.
- Building Strong Relationships
- Ambitious for Clients
- An Instinct for Business
- Seeking Innovation
We have consistently been ranked Band 1 for Brand Management by Legal 500 and top tier by WTR1000, with the latter commenting specifically that the team is "well-integrated with counterparts in Austria, the Czech Republic, France, Germany, Hungary, the Netherlands, Poland and Slovakia…and specialist IP support in China and Singapore" . This recognises the size and strength of Taylor Wessing's European Trade Mark group, as previously recognised by MIP's award to us as European Trade Mark Team of 2016. 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. With that resource, it means the team is well placed to weather the Brexit storm. WTR1000 has noted, "Brexit puts a premium on working with forward-thinking, creative and international counsel and Taylor Wessing fits the bill."
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 litigation.
Our team includes leaders in the trade mark field and has an excellent track record for successfully resolving brand disputes. These include some of the most significant and complex disputes in national courts and the Court of Justice of the European Union.
Job Summary/Principal Responsibilities
The successful candidate will work as part of a wider trade mark team.
- Managing international trade mark portfolios with a fairly high degree of autonomy but working alongside partners and supervising more junior trade mark assistants, with support from paralegals and our formalities team.
- 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.
- Managing UKIPO, EUIPO and foreign oppositions and registry cancellation and revocation actions.
- 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.
- Conducting and advising on trade mark availability searches, using appropriate online tools and through search agents.
- Advising clients on registrability of trademarks and recommending cost-effective registration strategies.
- Instructing and managing work of foreign attorneys, including critically reviewing their invoices before approval.
- Reviewing trade mark and EUIPO watch notices to consider possible oppositions.
- Reviewing and advising on impact of in-use reports and liaising with investigators.
- Drafting letters to third parties with conflicting applications and, potentially, use and handling negotiation of co-existence agreements
- Handling UDRP and similar domain name and Company Name complaints.
- 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.
Know How and Business Development:
- Working with partners to give cost estimates for filing, recordal, clearance or other projects.
- Volunteering ideas to improve business practices.
- Assisting partners to develop and strengthen client relationships.
- Actively contributing to internal know how and at team meetings, e.g. giving internal training, reviewing cases for internal discussion sessions.
- 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, public speaking including webinars, taking part in pitches.
Knowledge, Skills & Experience
The role is intended to be a junior to mid-level trade mark attorney role. We are looking for a candidate experienced with working fairly autonomously and directly with clients to manage their portfolios in a wide range of industry sectors. At least one of those portfolios should be reasonably substantial and active. Experience of handling cases at the UKIPO and EUIPO is essential, as is working quite extensively with foreign associates. Some experience working in an in-house trade mark department of a brand owning company could be useful but is not essential. Candidates should preferably be CITMA qualified.
The following skills are essential:
- 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 own workload
- Enthusiastic about brands and self-motivated
- Commercially astute and practical
- Ability to quickly engender trust and rapport with many different types of clients
Working Pattern: The standard Firm working hours are 9.30am – 5.30pm Monday to Friday although we ask for flexibility from our employees as necessary to accommodate business needs. Taylor Wessing supports agile working, and the Talent Resourcing team would happily have conversations with potential candidates about how we could support agile or flexible working needs.
Diversity & Inclusion: Taylor Wessing is committed to creating an inclusive working environment. Recognising the value diversity brings to the firm is key to our people strategy and it's what makes Taylor Wessing a great place to work. All decisions relating to recruitment and selection, appraisals and career development are objective, free from bias and based solely on individual abilities and merit. Please contact firstname.lastname@example.org if you have any questions about recruitment at the Firm, or require any reasonable adjustments to be made in regards to your application. For more information on our approach to diversity & inclusion, please visit taylorwessing.com/diversity
For more information on the Firm, please visit our website: taylorwessing.com
Taylor Wessing is committed to an active equal opportunities policy from recruitment and selection to appraisals and promotion. All decisions relating to employment practice will be objective, free from bias and based solely on individual merit.