We are looking for a motivated and capable qualified Trade Marks Associate to join our highly-regarded Intellectual Property department at Baker McKenzie LLP. This role would suit a qualified Trade Mark Attorney who is looking to join a truly international law firm.
The key focus for this role is to provide legal support to senior fee earners (Trade Mark Attorneys and Solicitors) in the busy Trade Marks Unit in London. This individual will have an excellent opportunity to gain exposure to, and interact directly, with important clients on a daily basis. You will be working on rapidly developing portfolios and will need an extensive knowledge of UK, EU and IR trade mark and registered design practices.
Duties will include:
- The day-to-day management of trade mark portfolios
- Conducting and reporting trade mark availability searches online and through search agents
- Advising clients on their trade mark portfolios in general
- Filing, prosecuting and renewing trade marks
- Attending hearings
- Initiating opposition, invalidity and revocation proceedings
- Prosecuting opposition, infringement and revocation proceedings
- Recording of mergers and acquisitions
- Advising clients on other IP related matters e.g. designs, copyright, domain names
Why should you apply for this role?
Baker McKenzie was one of the first law firms to recognise intellectual property as a legal specialism in its own right, and was a pioneer in establishing an international network of IP practitioners who are able to service the cross border needs of international trade mark owners. Today, Baker McKenzie has over 500 IP professionals around the world, working together as a cohesive unit to provide a range of comprehensive IP and trade mark portfolio management services to the Firm's global clients.
The London office's Trade Marks Unit (TMU) is an integral part of the IP department. The TMU presently comprises 2 partners, 10 associates, 3 paralegals and a number of secretarial and administrative support staff. Record keeping is fully automated through the use of Baker McKenzie's proprietary database, Global IP Manager, and iManage.
The TMU is responsible for many significant trade mark portfolios, including BAT, Abbott Laboratories and French Connection, and manages the global trade mark portfolio of one of the world's largest trade mark owners, Unilever.
Trade marks are some of the most valuable intangible assets of many companies. Our integrated team of solicitors and trade mark attorneys has a great deal of experience in advising businesses on effective ways to protect trade marks, including:
- conducting thorough, extensive searches of prior registrations and applications and advising on prospects for obtaining registration
- preparing and prosecuting trade mark applications
- conducting oppositions, cancellation proceedings and company name tribunal actions
- advising on and negotiating trade mark and design infringement and litigation before the Intellectual Property Enterprise Court
- negotiating and drafting agreements for the purchase, sale, license and franchise of trade mark rights
- providing practical guidance on how to create and build strong brand equity and police and enforce brands including protectable trade dress and the proper use of trade marks in packaging, labelling, advertising in print and electronic media
- registered design filing and prosecution
- Internet issues including domain name disputes
Key Skills and Experience Required
- CITMA- fully qualified
- Prior experience in the trade marks field in a patent or trade mark attorney firm or a law firm
- Excellent academic credentials
- Strong team player
- Good communicator both orally and in writing
- Able to demonstrate initiative and pro-activity
- Respects and enjoys the diversity of cultural, social and academic backgrounds found in the Firm
Why Join Us?
Baker McKenzie is a truly global law firm. Founded in 1949, we advise many of the world's most dynamic and successful business organisations through our 13,200 people in 78 offices in 46 countries. Yet big does not mean impersonal. We work hard to ensure that everyone knows their role and has the support they need to perform it to the highest standard. Our culture encourages this - how we work, think and behave in a collaborative and fulfilling way.
In London you will be part of a 950 person office, which is also our largest office globally. Originally opened in 1961, Baker McKenzie London is well established in the UK as a leading international law firm and is regularly involved in some of the country's most high-profile legal matters. We can offer you the work, pride and experience of being part of a leading law firm but in a local office environment that is hardworking, friendly and supportive.
The strength of the firm and our culture is evidenced by a number of recent awards, including:
- Thomson Reuters (formerly Acritas' Sharplegal) Global Elite Law Firm Brand Index, 2010- 2022 - ranked 1st
- The Times Top 100 Graduate Employers 2021-2022: currently ranked 52nd
- Thomson Reuters ranked the Firm No. 1 for cross-border deals for the last 12 years. More than 70% of our deals are cross-border.
- For the 14th consecutive year, the Firm was ranked first for deals with emerging market involvement, by both number of announced and completed deals.
- Law360 ranked the Firm as one of the 400 Largest US Law Firms in in its annual survey in 2020.
- Identified as one of the Hall of Fame for best law firms for women by Working Mother magazine, 2011-2021.
- Named one of Stonewall's Top 100 Employers for LGBTQ+, 2017-2020.
- Ranked as one of the Top 75 Employers in the 2021 Social Mobility Employer Index.
- Received Double Certification for earning top marks in the 2022 Corporate Equality Index and Equidad MX of the Human Rights Campaign Foundation.
- Winner of the Europe Mentorship Programme - International Firm award in the Euromoney Women in Business Law Europe Awards 2021
- Winner of the Gender Diversity International Firm, Talent Management International Firm, and Work-Life Balance International Firm awards in the Euromoney Women in Business Law Asia Awards 2021
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At Baker McKenzie we welcome direct applications.
Please click on the Apply icon to start the online application process for this role. We will then be in touch with you once we have reviewed your application. If you are unable to apply online, please contact the Recruitment Team on either 020 7919 1000 or Recruitment.London@bakermckenzie.com
For more information about this position or to discuss any adjustments you may require during the process please contact in confidence, David Roberts, Recruitment Manager, on 020 7052 5752 or firstname.lastname@example.org
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Our Commitment to Diversity & Inclusion
As the first truly global law firm, diversity and inclusion are foundational to our culture and strategic vision. We are a Firm of individuals from across the globe with different backgrounds, ideas, and points of view who collegially work together to solve complex problems and design practical solutions for our clients. Our multiple perspectives come from many sources, including the diverse ethnicity, culture, gender, nationality, age, sex, sexual orientation, gender identity and expression, disability, parental status, education, social background and life experience of our people.
Our global strategy is focused on our people, our culture, our clients and the communities where we operate. In 2019 we enacted ambitious new targets related to gender, racial and ethnic diversity at the Firm. These targets are viewed as a floor, not a ceiling, to advancing underrepresented groups, and they are backed by a variety of strategic initiatives aimed at achieving our goals. Our strategic vision is supported in London by six active employee led networks which champion diversity, lead on a number of internal campaigns and deliver a range of activity to celebrate differences in identity, inclusion, and key dates throughout the year including: LGBT+ History Month, International Women's Day, International Trans Day of Visibility, Mental Health Awareness Week, Pride, Black History Month, Social Mobility Week, International Day of Disabled Persons and many more!
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