Trade Mark Attorney

Help shape the future of intellectual property

Marks & Clerk is a leading IP law firm of Patent and Trade Mark attorneys and Solicitors with over 100 Partners and 750 employees worldwide. We have 15 offices across 7 countries and 3 continents. Our European Trade Marks (TM) team spans the UK and Luxembourg and includes c.60 TM specialists comprising attorneys, trainees and support staff.

Role purpose

The appointee will provide excellent service to our existing clients who range from large multi-national corporations to smaller growth companies, as well as supporting the continued growth of the M&C TM Business in Europe. They will benefit from the assistance and support of the TM team across Europe to ensure their successful integration into the firm. Extensive support is also available from highly capable clerical and administrative employees together with a bespoke case management system. Our technology has been developed to provide secure and efficient service to our clients whilst providing the environment for flexible and remote working.

Principal responsibilities

The appointee will work as part of a client facing team and will contribute to the TM business in the following areas:

• Preparing and filing EUTM Applications at the EUIPO
• Prosecuting EUTM Applications at the EUIPO
• Preparing, filing and conducting EUTM opposition proceedings, invalidity and revocation proceedings and appeals before the EUIPO
• Conducting trade mark clearance searching
• Advising on the availability, protection, use, exploitation, enforcement and assignment of Trade Marks
• Filing and prosecuting Benelux TM Applications
• Filing and prosecuting International Trade Mark registrations under the Madrid Protocol
• Coordinating Trade Mark application filing programmes across international markets
• Working with the TM Team, Partners and Marketing team on business development and marketing campaigns

Technical knowledge, professional qualifications and experience

The successful candidate will be a Trade Mark Attorney or Lawyer qualified in one of the member states of the EEA and a Professional or Legal Representative before the EUIPO.  In addition, they will be able to demonstrate:

• Experience in the relevant areas of responsibility
• Fluent written and spoken English (the working language of the M&C TM business is English) and ideally a 2nd language, with a preference for French, Flemish, Dutch or German
• Excellent time management and organisational skills
• Excellent communication and interpersonal skills with clients and colleagues – verbal and written
• A highly motivated and pro-active attitude, with drive to develop the practice
• The ability to assume responsibility for client relationships
• The ability to work effectively both independently and as part of a team
• Exceptional analytical abilities

Remuneration and benefits

Generous compensation package including:

• Competitive salary dependant on qualification and experience
• Participation in our bonus scheme for qualified attorneys
• 28 days’ annual holiday, plus statutory holidays
• Complementary health insurance
• Life assurance
• Permanent health insurance
• Reimbursement of membership fees to professional bodies required for the role
• Lunch vouchers

Please submit applications in English. Submissions will be treated with the strictest confidence.