Job Description
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We have a global full-service Intellectual Property (IP) practice which offers a one-of-a-kind solution providing IP services across four continents, in Asia, Australia, Europe, the Middle East, and North America. We are a truly integrated law firm, offering a full service global intellectual property (IP) solution.
Our IP lawyers seamlessly work for our clients in protecting and enforcing trade marks, copyrights, trade secrets, patents and other rights to protect their intellectual property as valuable business assets. We also assist our clients with licensing and transactions as well as IP due diligence and valuation.
We have significant experience managing global portfolios, advising on best practices for trade mark and patent prosecution strategy, and streamlining outside counsel legal spending.
The London trade mark practice is a cornerstone of the firm's global brand protection offering and acts as a strategic hub for many of our international trade mark and soft IP matters. Our London team leads the management of complex global trade mark portfolios, multi-jurisdictional clearance and enforcement programmes, and high-profile disputes for some of the world's best-known brands.
We can handle any technology, deadline, or project. We provide all of the advantages of both a global law firm and an IP boutique.
The role
To complement our existing team in London, we have an exciting opportunity for an ambitious associate to join our market-leading Intellectual Property team and assist with growing client demands. This is an excellent opportunity for an ambitious lawyer to work alongside leading trade mark specialists and advise some of the world's most recognisable brands on the creation, protection, enforcement and commercialisation of their trade mark portfolios.
We are looking to recruit an associate with a minimum of 4 years pqe. The team is currently made up of three partners, one consultant, two senior associates, two associates, two paralegals and a trainee.
The successful candidate will play a key role in managing international brand protection programmes, coordinating global trade mark portfolios, handling contentious and non-contentious trade mark matters, and supporting business development initiatives across a broad range of sectors including luxury goods, fashion, retail, consumer products, hospitality, technology and sports.
Work will likely include:
Trade Mark Prosecution & Portfolio Management
• Advising clients on trade mark clearance, registrability and filing strategies.
• Managing UK, EU and international trade mark portfolios for major domestic and multi-national clients.
• Coordinating global filing programmes and instructing overseas counsel.
• Advising on specification drafting, classification issues and prosecution strategy.
• Handling objections, office actions and appeals before the UKIPO and EUIPO.
• Conducting portfolio audits and advising on filing, maintenance and rationalisation strategies.
Trade Mark Enforcement & Disputes
• Managing opposition, cancellation, revocation and invalidity proceedings before the UKIPO and EUIPO.
• Advising on infringement risks, enforcement options and dispute resolution strategies.
• Preparing cease and desist correspondence and negotiating settlements.
• Coordinating multi-jurisdictional enforcement programmes with international counsel.
• Working on High Court and IPEC trade mark disputes.
• Advising on online brand protection, counterfeit activity and domain name disputes.
Strategic Advisory Work
• Advising on trade mark licensing, coexistence agreements and settlement arrangements.
• Supporting corporate transactions through trade mark due diligence exercises.
• Providing practical and commercially focused advice on brand clearance, adoption and expansion.
• Monitoring legal and market developments impacting clients' brand protection strategies.
Client & Team Development
• Building and maintaining strong client relationships.
• Managing matters efficiently and supervising junior lawyers and trainees where appropriate.
• Contributing to business development initiatives, marketing activities and client training programmes.
• Producing thought leadership and speaking at client and industry events.
Selection Criteria:
Qualities
You will need to be technically strong trade mark lawyer with excellent attention to detail, sound judgement and strong organisational skills. You will be comfortable managing a varied caseload and balancing competing deadlines in a fast-paced environment, while maintaining consistently high standards of client service and responsiveness.
Commercial awareness and a client-focused approach are essential. You will be expected to provide pragmatic, solutions-oriented advice, take ownership of client relationships and play an active role in the continued growth of the practice. We encourage every member of the team to develop client relationships and to assist with the development of the intellectual property group.
The successful candidate will be proactive, adaptable and resilient, with the ability to perform effectively under pressure, manage matters independently and consistently deliver exceptional service to clients.
K&L Gates encourages diversity and is an equal opportunities employer. We aim to ensure that no job applicant or employee will receive less favourable treatment on the grounds of sex, marital status, gender reassignment, race, colour, nationality, ethnic origin, disability, religion or belief, sexual orientation, pregnancy or childbirth or age. We aim to ensure that job applicants who are disabled, become disabled, or have had a disability receive no less favourable treatment than others on the grounds of their disability and we are supportive in making reasonable adjustments. We are committed to the promotion of equality and the elimination of unlawful discrimination and harassment. We will monitor and review the impact of policies and procedures and actively work to ensure that all members of K&L Gates are aware of their responsibilities under the Equality Act 2010.