Tomkins is one of Ireland’s oldest and largest firm of Patent and Trade Mark Attorneys. A Tier 1 firm, we have a rapidly growing, enviable client base, managed by a team of enthusiastic, friendly and experienced Attorneys. To meet the expanding needs of the Trade Mark Team, we are seeking to hire a part-qualified or qualified Trade Mark Attorney, as well as a Trainee Trade Mark Attorney, too. The successful candidate(s) will be involved in providing the full range of Trade Mark services to a variety of interesting and dynamic clients, both domestic and international.
Depending on experience:
- Carrying out searches, reviewing the results and reporting to clients with advice on the freedom to use and register a trade mark.
- Providing advice to clients regarding potential applications to be filed, including advice on marks to be filed and drafting specifications of goods and services.
- Overseeing the various stages of the prosecution of a trade mark from filing to registration, dealing with all official actions issued, reporting to clients and drafting and filing appropriate responses.
- Dealing with all trade mark contentious matters, such as oppositions, cancellation actions, invalidity actions, etc.
- Drafting and filing of evidence and observations.
- Providing legal opinion to clients on potential conflicts with third parties.
- Liaising with foreign Associates in relation to any foreign trade mark applications filed, including the filing of applications, prosecution of applications and completion of same.
- Attending to the recordal of various registrable transactions such as assignments, licences, changes in name and/or address and changes in legal constitution.
- Ensuring Client official and renewal deadlines are observed.
- Engaging in negotiations regarding disputes over trade mark use and/or registration.
- Advising in relation to potential trade mark infringement and/or passing off actions including issuing cease and desist letters.
- Providing assistance, direction and support to the solicitors and barristers conducting an infringement and/or passing off case.
- Handling trade mark watching services.
- Monitoring and maintaining Client trade mark portfolios.
- Domain name filing and management.
- Deal with and supervise customs and counterfeit actions.
- Keeping up to date with legal developments in the intellectual property field in respect of all forms of intellectual property rights.
- Ensuring that internal database records for all cases are accurate and relevant due dates are diaried.
- Billing on cases in a timely and accurate manner and ensuring accuracy of WIP records and liaising with the Accounts department as appropriate.
- Success in recruiting new work for the firm and determination in pursuing potential leads.
- Success in having articles published/name associated with events/mention in the media.
- Actively decreasing non-billable time achieved, resulting in increased productivity.
- Success in increasing network for potential referral work.