Allen & Overy is a leading global law firm operating in over thirty countries. Embracing new trends and harnessing decades of experience, we’ve earned our place at the forefront of the legal industry. Our partners are recognised as leaders in their field and our deals and cases often make headline business news. As a result, we’ve developed a reputation for delivering exceptional legal solutions that not only solve our clients’ challenges but exceed their expectations. By embracing new ways of thinking, integrating technology into our everyday work and putting our people first, we’ve become known for leading by example.
Join our team and you’ll be part of a flexible, inclusive culture underpinned by openness and consistent support for one another. Our culture enables people to define their own career path based on their strengths, while our ambitious outlook ensures we continue to provide each person with opportunities to thrive. We’re also committed to supporting a culture that drives diversity and inclusion. Every day, we’re working hard to create an environment where you feel you can bring your authentic self to work. To be comfortable and confident to be who you are in the workplace. To feel like you belong. If you’re ready to play your part in defining the future of law: It’s Time.
Due to growth of our practice, we have 3 exciting and newly created Trade Mark Attorney roles within our UK team. We are ideally looking for a Junior and Senior Trade Mark Attorney to be based in London and a Junior Trade Mark Attorney to be based in Belfast. The successful candidates will play key roles in helping to build the Brands Group as it expands its practice.
Allen & Overy is one of the few major global law firms with a full-service, cross-border intellectual property capability and the only magic circle firm to offer a trade mark and design filing and prosecution practice. As a firm A&O considers that trade marks and designs are crucial to protect the innovation and investment that goes into developing brands – which for today’s leading businesses are significant company assets. Our trade mark specialists support brand owners in developing, protecting and exploiting their brands on every level: from initial trade mark clearance and selection, to filing, managing complex international portfolios, enforcement and disputes and any transfer of IP rights.
The Brands Group’s recent work includes advising on some of the most high profile UK and EU trade mark and design cases. This includes representing Samsung and Manchester United in the High Court, as well as representing The Coca-Cola Company before the EU’s General Court. The Brands Group also assists a range of leading brand owners, including Amazon, Lloyds Banking Group, Standard Chartered Bank, James Bond, MGM, Gibson Guitars, Warner Bros and NBCUniversal.
We currently have around 120 dedicated intellectual property professionals across our offices in Europe, Asia Pacific and the US, with a wealth of experience across the full range of legal services relating to IP, both contentious and transactional. We employ the best people who offer the highest quality of service based on a thorough understanding of the technical and commercial context and the most rigorous project management of cases and transactions.
- Global IP Partners, Associates, Trade Mark Attorneys and other team members.
- PSLs, the trade marks formalities team and IP paralegals.
- Business Development Manager.
- Wider A&O community
Role and responsibilities
- Carrying out availability searches and advising on trade mark and design availability for use and registration
- Providing advice for trade mark and design filing strategies.
- Filing and prosecuting trade mark and design applications through to registration and liaising with local agents in relation to national applications worldwide.
- Advising clients on and dealing with registry objections and brand conflicts.
- Preparing and filing opposition, cancellation and revocation actions.
- Handling inter partes disputes before trade mark registries and supervising overseas disputes handled by foreign associates as well as negotiating and drafting settlements agreements.
- Supervising worldwide trade mark watching programs.
- Managing the renewal and maintenance of clients’ global trade mark and design portfolios.
- Drafting of assignments, licences, security interests and supervising the changes of name/address at the appropriate Trade Mark Registries and instructing local agents in foreign jurisdictions.
- Supervising diligence activities and advisory matters relating to brands aspects of corporate transactions.
- Assisting with practice management and business development.
- Supervising and training staff.
- You will be a Chartered Trade Mark Attorney. For the senior role, you will have significant experience and be able to work with minimal supervision.
- Strong technical knowledge of trade mark and design prosecution gained at a market leading practice.
- Strong academic credentials.
- Intellectual curiosity and versatility.
- Self-starter with the desire and ability continuously to acquire, build upon and share knowledge.
- Detail-focused and self-motivated approach.
- Strong organizational skills, with the ability to manage multiple deadlines.
- Excellent client relationship skills.
- Strong commercial/business acumen with the ability to deliver creative and pragmatic solutions and advice.
- Excellent communication and interpersonal skills, with the ability to interface at all levels to build strong relationships with both internal and external stakeholders.
- Collaborative team player with the ability to develop and work in a fast paced, intellectually rigorous environment.
- A person of sound judgment, able to establish a high level of credibility.
Who we are looking for
- We are looking for a high quality applicant with strong experience in trade mark and design prosecution to join and help build a growing team.
- In addition to strong English language capabilities, being able to work in another major European language would be an advantage.