Trade Mark Attorney

The role

We are looking for a Chartered Trade Mark Attorney to join our IP & Commercial team.  Working within a team of 4 Partners you will have the opportunity to work directly with clients, supporting them in protecting their intellectual property rights in the UK and internationally.

This is a broad role with opportunity to get involved across a range of trade mark issues in a variety of sectors. You will have the opportunity to develop both your technical expertise and client relationship and business development skills, working closely with and assisting in the supervision and mentorship of more junior members of the team.

The team:

We support well-known UK and international brands with the protection and enforcement of their IP rights. 

Our clients include individuals, entrepreneurial businesses and large corporates at the forefront of innovation within a variety of sectors including:

• Retail, leisure and hospitality 
• Media and entertainment, including interactive entertainment
• Advertising and marcoms
• Fashion and beauty
• The arts 
• Technology, including fintech
• Consumer electronics

Our trade marks practice focuses on clearance, prosecution, portfolio management and trade mark disputes. 

We provide our clients with advisory services covering the adoption, clearance and registration of trade marks and registered designs in the UK, EU and internationally by way of our trusted network of IP specialist firms. 

We regularly enforce our clients' rights by way of actions in the IPO, UDPR proceedings, Company Names Tribunal proceedings, infringement litigation and other forms of dispute resolution. We are also co-ordinate international disputes and are experienced in anti-counterfeiting matters, in particular, the handling of customs seizures for global brands.

Our recent experience includes advising;

• A US based technology company on a long running trade mark dispute with a telecoms company, including acting in multiple cancelations and oppositions.
• An internationally recognised sculptor on a trade mark infringement claim against a global manufacturer.
• International computer games corporation on the clearance, filing and enforcement of trade marks in the UK, EU and internationally.
• A sustainable home and personal care brand offering refillable, plastic-free products on a trade mark dispute with an identically named business that was also focused on resolving the problems associated with plastic waste.

Role responsibility

• Managing your own caseload, liaising with other team members and clients on trade mark matters and portfolio management;
• Advising on trade mark and design filing and strategy;
• Overseeing all aspects of trade mark and design portfolio management including: preparation of costs quotes; trade mark and registered design applications; recordals and renewals; citations, examination reports, watch notices and status reports.
• Preparation of clearance search reports;
• Drafting trade mark specifications, including technically correct limitations when required;
• Drafting trade mark assignments; 
• Preparing filing particulars and opposition particulars for instructing counsel in the EUIPO and internationally;
• International prosecution of trade marks and designs in national registries and at WIPO;
• Drafting Statements of Grounds, Defences, legal arguments and Observations;
• Managing opposition and cancellation actions and assisting with settlement negotiations;
• Managing the collection and collation of evidence in support of oppositions and cancellation actions;
• Drafting letters before claim, inter partes correspondence and witness statements. 

About you

Ideally you will be able to demonstrate:

• Post qualification experience in a Chartered Trade Mark Attorney role, with experience in trade mark and design portfolio management
• Experience in dealing with all aspects of trade mark formalities, including experience of having dealt with various trade mark registries.
• Experience in handling intellectual property disputes.
• A thorough understanding of trade mark law and procedure.
• Strong organisation skills with the ability to manage client deadlines
• Good communication skills, confidence in dealing with both internal and external stakeholders
• Exceptional client facing skills and the ability to operate as a 'trusted advisor'
• The ability and drive to develop long standing client relationships
• The ability to deal with complex technical problems
• A commercial approach to problem solving and providing innovative solutions
• Thoroughness and attention to detail
• Confident and effective advocacy/communication style
• Eagerness to actively participate in business development and profile-raising activities
• Willingness to embrace technology and new ways of working. 

Please note that we are not accepting applications via agencies for this role at this time. Before sharing any named candidate CVs, please contact your recruitment representative. If any named CVs are sent from agencies without approval from our recruitment team, they will not be deemed valid introductions, and no agency fee will be paid.

Benefits

• Competitive salary
• 25 days annual holiday
• Permanent Health Insurance
• Life Assurance
• Interest free Season Ticket Loan
• Private Healthcare
• Pension Scheme
• Staff Introductory Scheme
• Employee Assistance Programme

About us

With almost 200 lawyers in one location, we ensure our clients have the right team to help them get from where they are to where they want to be. We advise major corporates and institutions as well as entrepreneurial, ambitious enterprises which are often privately or family owned, or private equity backed. As well as our significant business law capability, we are one of only a few London-based law firms with a large private wealth offering. Our clients find our straightforward approach a compelling alternative to larger, less personal firms.

Whether you are an ambitious and talented individual wanting to hit the ground running from day one, or an established professional looking for a new opportunity, Howard Kennedy is the firm where you can really make it happen.

We have earned a strong reputation for our exceptional and uniquely talented people who between them deliver outstanding results for clients. In a firm of our size, our strong team dynamic creates a thriving culture of creativity and entrepreneurialism. Howard Kennedy is a pragmatic and non-hierarchical environment where success is shared, and you are proactively encouraged to thrive at your own pace.

Our distinctive culture is built on fairness and respect. Guided by the firm’s values of talk straight, think smart and be yourself, everyone in the firm holds equal value, and everyone plays their role in supporting, encouraging and inspiring colleagues to do their best work.

At the same time, we recognise and reward individualism, celebrating the diversity of our people and supporting them to grow their practice and drive their own career advancement.

As well as client work, there is opportunity to broaden your horizons at the firm with fulfilling pro bono and charity projects. We have a regular social calendar full of wellbeing activities, charitable and social events too.