6 months ago
We were named European Trade Mark Team of 2016 by Managing Intellectual Property magazine. This recognises the size and strength of Taylor Wessing's European Trade Mark group. 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. 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 has an excellent track record for successfully resolving brand disputes, including 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.
• 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.
• Handling negotiation of co-existence and assignment agreements with third parties.
• 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 mid-level trade mark assistant/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 ITMA 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