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 Team
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
Refinitiv (formerly Thomson Reuters) ranked the Firm No. 1 for
cross-border deals for the last 15 years. More than 70% of our deals
are cross-border.
Law360 ranked the Firm as one of the 400 Largest US Law Firms in
in its annual survey in 2022.
Identified as one of the Hall of Fame for best law firms for women
by Working Mother magazine, 2011-2021.
Received a Gold Award on Stonewall's 2022 Global Workplace
Equality Index of Top Global Employers for LGBTQ+ people
Ranked as one of the Top 10 Employers in the 2022 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
In 2022, we won Career Development International Firm, Diverse
Women Lawyers International Firm, Work-Life Balance International
Firm, Innovative International Firm of the Year and Women in
Business International law firm (WIBL Asia).
Have a look at our YouTube
channel to find out more about us!
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, David Roberts, Recruitment Manager, on 020 7052 5752 or david.roberts@bakermckenzie.com
Please note Baker McKenzie does not accept unsolicited CVs. Please clickhere
for details of our Agency Policy and commitment to sourcing directly.
Commitment to Inclusion, Diversity & Equity
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!
Baker McKenzie London has been accredited by Disability Confident,
joining over 18,000 organisations that have signed up to help change
behaviours and cultures in businesses, networks and communities and
reap the benefits of inclusive recruitment practices.
