Executive Summary
This is an excellent opportunity for a senior Trade Mark Attorney or solicitor with trade marks experience to join our market leading Charity and Social Enterprise team. You will be responsible for providing strategic advice and legal guidance to our clients in relation to trade mark law, working collaboratively across our full service law firm on a more varied, interesting and challenging range of work than a standalone Trade Mark practice may be able to offer.
The role
The Bates Wells trade marks team is unique in that much of its work is focused on our charity and not-for-profit clients. However we also have a growing commercial sector clientele, many of whom are within the purposeful business sector. This is a genuine and unique opportunity to use your skills and experience to make a real difference. You will have a high degree of client contact, developing your own relationships and networks as well as taking a lead on the day-to-day running of matters including supervising and developing more junior colleagues.
Key experience
This hire is being made with growth in mind and is a real opportunity for someone, with the help of the partners, to build their own client base in Bates Wells’ unique space in the trade marks market. Duties will include:
- Preparing and filing trade mark applications in the UK and abroad, responding to examination reports, and managing the registration process.
- Managing trade mark portfolios for clients, including renewals, recordals, and assignments.
- Advising clients on trade mark clearance searches and the availability of their proposed trade mark.
- Conducting opposition and cancellation proceedings before the IPO.
- Drafting and negotiating trade mark licenses, co-existence agreements, and settlement agreements.
- Management of trade mark disputes and providing strategic advice on litigation, including infringement and passing off actions.
- Keeping up to date with developments in trade mark law and advising clients accordingly.
- Broadening and deepening internal and external networks, personal brand, and personal business development approach aligned to department business plan, leading to significant and sustained work origination.
- Proactively leading client development activities that result in increased client engagement, positive client feedback or new client relationships. Supports partners in CRM activity, including acting as deputy CRM for some clients.
- Leading on the delivery of bold solutions and added-value services to clients to further develop client relationships such as training, horizon scanning and sector initiatives.
- Assisting clients with trade mark due diligence in corporate transactions.
- Conducting legal research on trade mark law and advising clients on the registrability of trade marks in the UK and abroad.
About you
- You will either be a UK qualified Trade Mark Attorney or a Solicitor with relevant specialisms in IP/Trade Mark with at least seven years post qualification experience.
- Owing to the nature of the role, you will have an enthusiasm for client contact and business development, and ideally a demonstrable track record of helping to build a practice.
- You are passionate about client service, building strong relationships and excited about growing your own practice through business development opportunities with potential and existing clients in the purpose and impact space.
- You will be capable of and comfortable in working with minimal supervision where appropriate, while receiving support and development in more complex areas.
- You share our values and want to make a difference and that you are a part of the Bates Wells experience and ‘belong’.
About our culture
- A one firm approach means working together and improving to achieve common goals and to provide a consistent Bates Wells experience.
- As a values-driven firm we show commitment to our clients, our people, the environment and society. We take into account the Climate Emergency and Biodiversity Crisis in developing our business strategy.
- We want to have a positive impact on our people who are our greatest asset so that they can have a positive impact on others. Purpose is baked into our partnership deed.
- We promote a strong work/life balance with at least 25 days holiday with the opportunity to buy more.
- We have an agile and hybrid working environment – this means you might sit next to a different colleague every day or choose to work from our rooftop garden if you are in the office.
- Our benefits and wellbeing package includes firm matching pension contributions, private medical insurance plus a medical benefit cash plan, discretionary bonus arrangements, life assurance, subsidised gym memberships, lifestyle discount scheme and a firm-wide profit-sharing scheme.
- Everyone gets a bonus if there is one - a proportion of the LLP profit is distributed to our people when we exceed our financial thresholds.
About our Trade Mark team
Our intellectual property and trade marks team focuses on, and understands, both the traditional commercial, and the charity and non-profit marketplace. We help responsible businesses, individuals, charities and non-profits, social enterprises, public sector bodies and all kinds of other organisations across a range of fields: notably, education, healthcare, finance, communications, and the culture and creative sector. We also act for the organising committees of major sporting events and major INGOs.
Our work encompasses trade mark searching and registration, in the UK and worldwide; we help our clients with licensing, and with resolving IP-related disputes of all kinds. Unlike many other law firms, our trade marks team is comprised entirely of specialised Chartered Trade Mark Attorneys; we’ve decades of experience in helping clients most valuable assets: its brand, copyright works, technology (in the forms of patents and designs) and know-how.
About the opportunity
- We see, treat and respect our Trade Mark Attorneys in the same way as other lawyers in our firm; we have one set of salary bands, one career structure and equal access to training and development activities.
- We encourage all our lawyers to pursue their personal interests through their practice, develop management skills through supervising junior fee earners, contribute to business development and work cross-departmentally through our wide range of exceptionally strong sector groups.
- Lawyers are provided with career development support, for example encouragement to co-manage client relationships with partners, support the development of recently qualified lawyers and be involved in the development of the department’s strategy.
- Our team structure ensures a supportive environment coupled with the opportunity to work collaboratively with colleagues across the department and with other teams in the firm.
- The firm has a competency framework in place which sets out the competencies we expect from our people at this stage.
- Specific tasks may change over time, so we’ll need you to be adaptable and flexible as we continue to meet our clients’ needs.
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