Trade Mark Career Programme

Introduction

Few careers give you the chance to immerse yourself in such diverse business sectors or to grapple with such fascinating legal challenges. Fewer still give you both at once. Being a trade mark attorney is one of those careers. The rewards are excellent too, and compare very favourably with other professions.

So it’s interesting, rewarding work. The exams can be tough but the good news is that if you’re part of the Kilburn & Strode team, we’ll do everything we can to help you succeed.

We’re known for the quality of our structured training programme, and it’s the support we offer that really sets our approach apart, starting with a partner who will mentor you throughout. Another key difference is the level of responsibility – expect to be in client meetings early on in your training and working on real cases. You’ll be supervised, of course, but we know that the best (and most enjoyable) way to learn is to let you roll up your sleeves and get stuck in alongside other members of the team.

Phase 1: New Starter

Timing: for up to 1 year after joining the firm

Key activities: induction; introduction to trade mark law; responses to trade mark office objections; drafting new trade mark applications; client meetings

After a formal induction, you’ll join one of our teams as a Trainee Trade Mark Attorney. Working side by side with experienced colleagues, you’ll master the fundamentals of international trade mark law – the concepts of distinctiveness and (non-)descriptiveness – and apply these ideas to your clients’ real-world situations. You’ll learn about the tests that can establish whether a conflict exists between two marks and, by reviewing search reports, watch notices and examination reports, you’ll discover how to assess the similarity between trade marks.

Fighting the trade mark office’s objections to client applications will be part of your role. This will generally mean reviewing the application, understanding the scope of protection being sought, and analysing how the examiner has considered the application. The next step is to use relevant and recent case law to craft an argument that will persuade the examiner to waive their objections.

Preparation – or ‘drafting’ as we call it – of trade mark applications will be another key skill to learn. These applications, and the specifications of goods and services they contain, define the scope of protection given to each trade mark.  

Drafting and analysing specifications is a central part of what we do so you can expect to spend a good deal of time as a trainee gaining hands-on experience of goods and services in this area.

Typically this will mean talking to a client to gain a detailed picture of their business, products and customers. You will then use that knowledge to judge the best route for a trade mark registration and then write the specification which scopes out the extent of the desired protection. Along the way you’ll learn how the registration process differs from the UK to the EU and internationally.

All this on-the-job training will be supplemented by lectures from CITMA (the Chartered Institute of Trade Mark Attorneys). Covering a wide range of trade mark-related topics, they’re designed to keep attorneys at all levels abreast of developments within the profession. We encourage our trainees to attend these monthly sessions close to our office, and the drinks afterwards too as they’re a particularly good opportunity to network with the many attorneys and solicitors who attend.

Phase 2:  Certificate in Trade Mark Law and Practice, Queen Mary, University of London

Timing: you would attend this course usually no later than one year after joining. It runs from September to April, ending with exams in May-June.  

All our trainees complete the Certificate course – it’s run by Queen Mary, University of London and sessions are held fortnightly on Fridays and Saturdays. You’ll still have your regular caseload to manage back at the office, so you’ll have the chance to put the theory into practice when you’re not in the classroom.

The course is made up of the following four modules: Trade Mark Law A (which covers trade mark applications and process up to the point of registration), Trade Mark Law B (covering post-registration issues such as renewals, cancellation actions, and portfolio strategy), Foundations of English Law and Copyright and Designs.

By passing the exams at the end of the course you become part-qualified and are eligible to move on to the next stage of training, which is offered by Nottingham Law School.

More details about the course can be found on the Queen Mary, University of London website.

Phase 3:  Part-Qualified Trade Mark Attorney

Timing: after completing the Queen Mary course and for the next year.

Key activities: more experience and variety of case-work; more responsibility with clients and colleagues; attending Nottingham Law School’s Professional Certificate in Trade Mark Practice course, preparation for remaining exams. 

Having successfully completed the Queen Mary course, you’ll have a break from exams for around six months and concentrate on doing quality work and keeping your clients happy. This is a transitional period, a chance to reconcile your newly acquired theoretical knowledge with the need to provide pragmatic, commercially-minded advice to your clients. Knowing how to strike that balance is one of the core skills of a successful attorney. 

This is also a time when you will rely less and less on input from your supervisor, have more autonomy and take on more responsibility. You’ll take the lead on trade mark searches, drafting new applications, managing filing programmes and responding to trade mark office objections. And as your caseload and client interaction increases, your growing commercial understanding will shape the way you advise clients and handle their cases. 

At the same time, your workload will diversify. You will have already become involved in contentious matters, including opposition work such as the defence of one of our client's trade mark applications from a challenge by a competitor, or our challenge to a third party application. You’ll also continue to learn how to draft written arguments to defend or challenge and put forward your client’s position, as well as negotiate settlements between your clients and third parties.

Alongside your day-to-day work in the office, you will also attend a course at Nottingham Law School. It runs from October to May, with classes being held every two months or so and taught in blocks from Wednesday to Saturday. Delivered through a mixture of interactive lectures, role play, case study exercises and discussion groups, the course is designed to develop the professional skills you need to be a successful trade mark attorney.  

Also, during your early years you will complete a training diary tracing your exposure to the various facets of trade mark work. 

With the exams passed and the training phase complete, you’ll be a fully qualified trade mark attorney. This means you are now eligible to be promoted to the level of Associate with the firm. 

Phase 4:  Associate    

Timing: usually after 3.5 to 5 years from joining the firm

Key Activities: working largely autonomously; running and growing your own case-load; business development; playing your part in smooth running of the firm

As an Associate, you’re a fully-fledged attorney. You have the experience and judgement to manage your own case-load autonomously, efficiently and to the delight of your clients.  For unusual or particularly complicated cases you may – as do even very senior attorneys – seek advice from a colleague. This sort of informal discussion and sharing of experience between colleagues is another characteristic of Kilburn & Strode, and something that we see very much as a good thing. One of the interesting things about this job is that others will almost always be able to add to your own perspective or experience; it's a very short-sighted attorney who thinks they’ve seen it all.  

With increased responsibility comes the opportunity to perform at a higher level. As a new Associate, you wouldn’t be expected to bring in significant work, but your thoughts should turn in this direction once you’re established at this level. Gaining repeat instructions from clients, as many of our Associates do, is an excellent sign that you are doing something right.  You could also become involved in business development activities, such as new business pitches, foreign trips to build relationships with clients and other attorneys, giving industry talks, writing for trade mark publications and networking at conferences. And joining the various professional associations, both domestic and international, is another good way to raise your profile and that of the firm.

We also encourage our Associates to play a part in the running of the firm, and you’ll already be managing the way that you and your secretary work together. You can also contribute by organising and taking part in department or firm-wide seminars, and, for example, in working with colleagues to develop the firm's computer and work-flow systems. 

Partner 

If you have ambitions to be more involved in the overall running and well-being of the firm, you’ll probably have your sights set on becoming a partner. 

It’s a big responsibility as you could be one of the people who ultimately owns the business. To get there you’ll need to combine an ability to look after your case-load successfully with excellent business development and management skills.

We recognise that not everyone wants to become a partner, of course. That’s why we are committed to helping every member of our team, wherever their skills and career preferences lie, to fulfil their potential and have an interesting and rewarding work life. 

There are other good firms out there, but the quality of their individuals is not as high from top to bottom as it is at Kilburn & Strode

World Trademark Review

Even if we’re not advertising a role right now that looks right for you, you are still very welcome to send us your CV to: hiring@kilburnstrode.com

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