Description

The Role

We are looking for a motivated and capable junior and mid level Trade Marks Associate to join our highly-regarded Intellectual Property department at Baker & McKenzie LLP.

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 trade mark and registered design practices from around the world.

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
  • General maintenance of other smaller trade mark portfolios
  • 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 Team

The London office's Trade Marks Unit (TMU) is an integral part of the IP department. The TMU presently comprises 13 fee earners 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, rendering paper files a thing of the past.

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 the world's largest trade mark owner, 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 and service mark applications
  • conducting opposition and cancellation proceedings
  • 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

  • ITMA-We will consider both fully qualified or part qualified applicants
  • 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 13,000 people in 77 offices across 47 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 an 800 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, yet friendly and supportive.

The strength of the firm and our culture is evidenced by a number of recent awards, including:

  • Acritas’ Sharplegal Global Elite Brand Index, 2016 - ranked 1st/Brand Index: 100
  • The Sunday Times’ Best Companies to Work For 2011, 12, 13, 14, 15, 17: currently ranked 66th
  • The Times Top 100 Graduate Employers 2016: currently ranked 57th
  • Stonewall Workplace Equality Index 2017: currently ranked 7th
  • Euromoney Women in Business Law Awards 2016: Five awards: Most Innovative International Firm for Women, Best International Firm for pro bono work, Best in tax, Best in Employment and Overall Outstanding Female Practitioner Award

 

To Apply

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, Bina Hale, Recruitment Officer, on 020 7072 5739 or Bina.Hale@bakermckenzie.com.

NO AGENCIES PLEASE

Please note Baker McKenzie does not accept unsolicited CVs. Please click here for details of our Agency Policy and commitment to sourcing directly.

Our Commitment to Diversity & Inclusion

Baker McKenzie has a culture of diversity and inclusion in its DNA – since our beginning, the differences of our people have helped us to work fluently across borders, cultures and practices. This is intrinsic to everything we do and underpins Baker McKenzie's vision to be the global law firm of choice. We understand that organisations work best when people with different backgrounds and points of view are brought together. We also know people perform at their best when they can be themselves at work. Baker McKenzie is committed to serving our clients with innovative solutions brought about by a diverse talent pool and an inclusive community.

The London office mirrors the wider firm in encouraging the best people, regardless of race, religion or belief if any, gender, gender identity, disability, sexual orientation or age, to fulfil their professional aspirations with us so as to create an exciting and diverse legal environment.