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Clayton Utz

Senior Associate - Trade Marks

Posted 2 Days Ago
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Sydney, New South Wales
Senior level
Sydney, New South Wales
Senior level
The Senior Associate in Trade Marks will provide trade mark services and advice, manage trade mark applications and portfolios, assist in oppositions, draft agreements, and offer IP advice on corporate transactions. Working with a team of experienced professionals, the role focuses on delivering strategic commercial advice in diverse industry sectors.
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The role

We currently have an exciting opportunity for an experienced trade mark attorney or lawyer to join our Intellectual Property & Technology team, based in Sydney.

You will work in a team led by Tim Webb, Dean Gerakiteys and Brett Doyle. This is an excellent opportunity to progress your career in the specialised area of trade mark law and build your brand alongside experienced and well respect experts. This role will see you working with some of our largest blue-chip clients.

Key responsibilities

The Trade Marks team provides services to clients in a diverse range of industries, including FMCG, transport, energy and resources, clothing, food, pharmaceuticals, banking and finance, health services, broadcasting, entertainment, technology, government and semi-government agencies.

In this role you will:

  • Provide trade mark services and advice on registration and enforcement issues for a wide range of industry sectors (including for our pro bono clients)

  • Advise on the adoption of new brands and re-branding strategies including undertaking clearance searches

  • Act on trade mark applications including preparing submissions replying to official reports issued by IP Australia

  • Assist in the management of international trade mark portfolios

  • Prepare and manage oppositions and non-use actions, draft evidence and brief and instruct counsel

  • Draft co-existence and licence agreements

  • Provide advice on IP aspects of due diligence and related corporate transactions

Skills & Experience

This role would suit a specialist trade mark lawyer or a trade mark attorney looking to step into a leading IP focused practice and who is interested in furthering their experience in trade marks.

To be successful in this role, you will have:

  • a minimum of 5 years' experience working in a trade mark attorney firm or in an IP practice of a law firm with substantial focus on trade marks

  • a sound knowledge of trade mark law and practice

  • a conviction that your career will be advanced by providing strategic commercial advice on matters concerning trade mark law

  • experience using Improtech software and databases would be advantageous

In addition to this, we're looking for someone who is able to work in a team environment but also autonomously, has excellent attention to detail and whose aim is to provide outstanding service to our clients. The position offers the opportunity to work with and learn from recognised practitioners in advising a range of clients with diverse needs.

The Intellectual Property & Technology team

Our Intellectual Property & Technology team is one of Australia's largest and most experienced specialist groups.  Clayton Utz was awarded Trade Mark Law Firm of the Year (Australia) and IP Transactions & Advisory Law Firm of the Year (Australia) at the 2023 Managing IP Awards Asia-Pacific.

Our Australian and international clients include fast-moving consumer goods companies, government agencies, telcos, television networks, content providers, automotive companies private equity firms, banks (international and local), pharmaceutical companies, sporting bodies, online service providers, print and digital publishers, and IT software and equipment suppliers and their users.

For further information, please visit our Intellectual Property showcase page on LinkedIn.

#LI-NS1

How to Apply?

We prefer to work directly with candidates, if you are interested in this role, please click the ‘Apply’ button or contact the consultant, details below, for more information. Clayton Utz is an inclusive employer that supports flexible work arrangements, please feel free to discuss your flexibility needs with the recruiter for this role.

Consultant Contact Details

Nicole St John, (02) 9353 4928

Accessibility and Inclusion

We are committed to making reasonable adjustments to provide a positive, barrier-free recruitment process. Do you require any support or reasonable adjustments to complete your application? If so, please contact the recruiter via the above telephone number or via email to [email protected].

For more information on Clayton Utz, please visit www.claytonutz.com or follow us on LinkedIn here.

Agency submissions

Clayton Utz does not accept agency submissions unless the agency is specifically contacted by a member of the Clayton Utz Recruitment Team. Please do not forward candidate profiles or resumes to Clayton Utz partners, hiring managers or other employees - this will not constitute as an introduction to the firm and Clayton Utz will not be liable for a fee.

Top Skills

Improtech

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