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6 months ago
Mishcon de Reya LLP
Location: London
Job type: Permanent
Category: Associate Jobs
The Firm

Founded by Victor Mishcon in a one-room office in Brixton in 1937 we now have offices in London and New York, employ more than 800 people, with over 500 lawyers offering a wide range of legal services to companies and individuals. In every area of the law that we operate, Mishcon de Reya prides itself in providing a best in class service to its clients. Specifically we offer the following legal services: corporate; dispute resolution; employment; family; private client; and real estate. An entrepreneurial spirit - where candour and involvement are key - characterises our ability to develop and execute the strategies required to achieve our clients’ goals in all these areas. We are an independent firm with an international footprint that extends far beyond our offices in London and New York.

The Team

The services provided by our Brands team encompass the full life cycle of a brand, from creation through to protection and enforcement. We are experts in trade mark and design filing, but we go beyond this. We add value to businesses by playing a strategic advisory role – finding the right legal strategy to best support commercial strategy. Our team is ranked in Tier One for Brand Management by Legal 500 and in 2017 won a Legal 500 award for Brand Management services based on client feedback.

We operate across four key areas – clearance (including acquisition), monitoring, disputes, and domain names – working in tandem with our IP litigation and commercial contracts groups. We have strong relationships with industry bodies across a variety of sectors and work closely with the UK and EU Intellectual Property Offices, and the World Intellectual Property Organisation.

With a team of Partners, Associates, Trade Mark Attorneys and Paralegals, we are able to assign the right expertise according to the nature of a matter. Whether a brand is emerging or is established and expanding into new markets, regions or sectors, we can ensure rights are fully protected and ready for commercial exploitation.

In September 2018 Mishcon de Reya announced launched a new brand management business, MDR Brand Management. This is the first brand management business to be launched by a leading law firm in the United Kingdom, and is the fourth non-legal business within The Mishcon de Reya Group, sitting alongside MDR Cyber, MDR Discover and Mayfair Private. The Brands team works closely with MDR Brand Management and offers legal services to its clients.

Job Profile

Mishcon de Reya LLP is looking to hire a Trade Mark Solicitor or Attorney. The candidate will have experience in UK, EUTM and international trade mark and design filing and portfolio management as well as Registry proceedings. Candidates must have experience of advising on trade mark and design protection with a recognised and can demonstrate strong commercial awareness and strategic thinking towards the needs of the client.

Main Responsibilities/Duties

The successful candidate will be expected to perform the following duties:

* Provide strategic guidance on trade mark and design applications
* Provide search and clearance advice to use and/or register new marks at the UK and EUIPO levels
* Co-ordinate searching, filings, renewals and disputes globally via the firm's network of international associates
* Deal with registry objections, oppositions, revocations and associated settlement agreements
* Manage national and international trade mark portfolios for emerging and established brands giving pro-active and timely advice, ensuring deadlines and meeting performance are met
* Provide day to day supervision of the Trade Mark Paralegals and Administrators and support the development of other team members
* Work closely with the Partners of the IP department in developing new client relationships and existing client relationships
* Builds a reputation for providing a 'gold star' service to clients by meeting Brands Service Delivery Guidelines
* Becomes known as a Champion within the firm for specific area or sector (e.g. designs, China, WIPO, Technology etc).

Person Specification

Candidates will be considered from either private practice or in-house but must possess solid experience in the Firm's core sectors as well as in trade mark prosecution and design filing. We are looking for an energetic, enthusiastic, driven but team-orientated individual who can demonstrate through past experience and from interview that they have a strong commercial and client-led approach to their work. Candidates must be able to take a swift, analytical approach to client problems, possess solid communication skills and have a sound understanding of the significance of processes in prosecution matters.

* Excellent team player.
* Excellent attention to detail.
* Excellent organisational skills.
* Ability to effectively manage own workload.
* Ability to communicate effectively with people at all levels.
* Ability to work independently and as part of a team.
* Personable and confident, able to build relationships with partners/ key stakeholders.
* Resilient and calm under pressure.
* Adaptable and flexible approach.
* Pro-active and takes initiative.

Please note that this job specification is not an exhaustive list of duties but merely an outline of the key components of the role. There may be additional responsibilities required as and when requested.

Diversity & Inclusion lie at the heart of our core values. At Mishcon de Reya, our aim is to promote and foster a culture which embraces diversity, respect for the individual and the expression of talent, to empower individuals to fulfil their, and the firm’s, potential. In order to support this, we recognise the importance of flexible and agile working and are open to having conversations on how this could work for you and our business.


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