Associate (Chartered Trade Mark Attorney)

This job is with Taylor Wessing, an inclusive employer and a member of myGwork – the largest global platform for the LGBTQ+ business community. Please do not contact the recruiter directly.

Taylor Wessing

Taylor Wessing is a global law firm that serves the world's most innovative people and businesses. Deeply embedded within our sectors, we work closely together with our clients to crack complex problems, enabling ideas and aspirations to thrive. Together we challenge expectation and create extraordinary results. By shaping the conversation in our sectors, we enable our clients to unlock growth, protect innovation and accelerate ambition.

With 1200+ lawyers, 300+ partners, 28 offices and 17 jurisdictions we are looking to expand our Technology, IP and Information team, with the addition of a Associate (Chartered Trade Mark Attorney).

Meet the team

Our UK Brand Protection practice sits within our 75-strong UK Technology IP & Information (TIPI) group. The Team members are located in our London, Liverpool or Cambridge offices, with no difference between the type of clients and nature of work undertaken in each office. The brands practice is part of our wider international TIPI practice which is one of the most highly respected around the world. Due to the strength and depth of our expertise, Taylor Wessing has an outstanding reputation in the field of IP and IT.

The team advises global clients on a wide range of IP issues through the full lifecycle of a business, and across a large variety of matters. Our international Brand Protection practice is not just one of the largest practices of its type, it is also among the top rated, with a major international trade mark filing and portfolio practice that is strategically core to the firm. Taylor Wessing has been consistently ranked Band 1 for Brand Management in Legal 500 and top tier by WTR1000, with a number of team members individually identified as leaders in their field.

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, avoiding and handling disputes and litigation. Advising clients ranging from those with extensive international portfolios to SMEs and start-ups, we have an excellent track record in successfully resolving high-profile and complex brand disputes throughout Europe and Asia. We have recently added core IP/IT strength to our Dubai office and also offer full brand protection services across the MENA region.

Key responsibilities

The successful candidate will work with a high degree of autonomy but will work closely with the partners and other senior team members. They will be instructing and supervising more junior attorneys, trainee trade mark attorneys and paralegals.

• Managing national and international trade mark portfolios and providing high quality holistic brand management support.
• Handling trade mark conflicts and registry disputes, including advising on strategies to defend, prosecute and settle oppositions, cancellation and revocation actions.
• Coordinating high volume/standard infringement disputes which may be related to registry actions, including preparing and sending cease and desist letters, dealing with follow up correspondence, negotiating settlements (working alongside solicitor associates if the dispute becomes more contentious and litigious).
• Conducting and advising on trade mark availability searches, using appropriate online tools and through search agents.
• Advising clients on registrability of trade marks and recommending cost-effective registration strategies.
• 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, including instruction of investigators.
• 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 detailed portfolio audits to identify gaps and discrepancies, presenting findings in a report along with recommendations.
• Advising on and handling domain name/company name complaints.
• Instructing and managing work of foreign attorneys, including critically reviewing their invoices before approval.
• Supervising the review of watch notices and advising on possible oppositions.
• 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 (including liaising with specialist trade mark billers and credit control teams).

Key responsibilities

• 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 and being actively involved in industry organisations, public speaking including webinars and our annual TW Brands Forum event.
• Assisting partners to develop and strengthen existing client relationships and build new ones.
• Participation in client pitch preparations and attending pitch meetings
• Working with partners on issues of pricing and giving (and managing compliance with) cost estimates for filing, recordal, clearance or other projects.
• Volunteering ideas to improve business practices.
• Actively contributing to internal know how and at team meetings, e.g. giving internal training, reviewing cases for internal discussion sessions.
• Being a supervisor for trainee trade mark attorneys and providing career guidance and development to help them through the CITMA qualification process.

Knowledge, skills and experience

The role is intended to be a mid to senior trade mark lawyer/attorney role, perhaps up to about 10 years PQE (but this will not be determinative). There is no need for a client following.

We are looking for a candidate experienced with working autonomously and directly with clients to manage their portfolios in a wide range of industry sectors and capable of managing, supervising and developing a team. One or more of those portfolios will be reasonably substantial and active.

Experience of handling cases at the UKIPO and EUIPO is essential, as is working with foreign associates. Any experience working in an in-house trade mark department of a brand owning company could be useful but is not required. Candidate should preferably be a CITMA qualified attorney, but other qualifications will be considered.

The following skills are essential:

• A real enthusiasm for trade mark law, a passion for brands and self-motivation.
• Sound judgment on merits and risks of claims, reflecting experience and commercial reality.
• 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 their own high volume workload
• Commercially astute and practical.
• Ability to quickly engender trust and rapport with team members and many different types of clients.

Benefits

Here are a select few benefits that Taylor Wessing offer;

• Hybrid working (Offering the opportunity to work remotely, while maintaining a social boundary by working from our award-winning offices for 3 days a week)
• Holiday (Our basic annual holiday entitlement starts at 25 days, with a further discretionary day of paid leave in December. You may also purchase up to five extra days each year (pro rata).
• Enhanced Maternity and Paternity leave (After one-year service, you are entitled to up to 26 weeks leave full pay if you or your partner give birth or adopt a child).

Along with these there are many more benefits we offer, with the addition of a comprehensive flexible benefits package available.

Our culture

Nurturing a diverse, inclusive culture allows all of our talent to flourish, sparks creativity and powers innovation. We continue to build a team that exemplifies inclusivity and reflects the firm's core values: creative, excellence, integrity, responsible, respect and team. We value and celebrate the differences in who we are, what we have experienced and how we think, so all candidates will be treated fairly regardless of age, caring responsibilities, disability, gender identity, marital status, neurodiversity, pregnancy, race, religion or belief, sex, sexual orientation and socio-economic background.

The way we work

At Taylor Wessing, we never settle for average. We're creative thinkers, problem solvers and continuous learners who excel at what we do and believe our best work is still ahead of us. We are a firm that's large enough for you to achieve your ambitions, but connected enough to be a true community.

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Location: London, GB

Posted Date: 11/6/2024