You'll need a thorough knowledge of trade mark law and practice as well as excellent communication skills and commercial awareness to qualify as a registered trade mark attorney
Trade mark attorneys are specialist legal professionals qualified to advise clients about protecting and enforcing their trade mark rights. By providing legal support on the registration, use and exploitation of new and existing trade marks, you will ensure that companies successfully protect the identity and integrity of their brands. You may also advise clients about other intellectual property issues, such as copyright, registered designs and licensing.
Trade marks are used to identify a person's or company's products or services and may take many forms, including logos, shapes, company names or even smells. They are used by a huge range of companies, from multinational corporations to small local businesses.
You'll need to:
- manage, protect and enforce portfolios of intellectual property rights, including trade marks, copyright and designs;
- advise on the legal aspects of marketing new goods or services and their introduction into the market place, as well as developing brand enlargement;
- research new trade marks and advise on availability by carrying out national and international searches to see if the proposed trade mark is already in use;
- oversee all procedural details of trade mark and design registrations in the UK and internationally;
- negotiate in trade mark disputes and take action on trade mark infringement and passing off;
- draw up appropriate contractual papers;
- provide back-up to the solicitors and barristers conducting a case if it comes to litigation;
- monitor existing and proposed trade marks;
- advise clients about countries in which to seek registration and the most cost-effective way of achieving this;
- develop working relationships with relevant brand managers and customers of departments;
- handle renewals of trade mark and design registrations.
At firm partnership level, the work may also involve management and marketing activities.
- The average salary for a trainee is £18,000, rising to £28,000 after one year.
- On qualification the average salary is £39,000, rising to £59,000 after two years.
- Once you reach partner level you can expect to receive in excess of £84,000.
Salary levels vary greatly depending on the size and location of the firm. Trade mark attorneys work in private practice and in industry or corporate practice. Starting salaries are higher in industry than in private practice, reflecting the experience required. However, at the top of the scale, a higher salary can be achieved in private practice.
Income data from The Institute of Trade Mark Attorneys (ITMA). Figures are intended as a guide only.
The work is generally office based and you will usually work normal office hours, which typically include regular extra hours but not weekends or shifts.
Self-employment and freelance work are sometimes possible. There are opportunities for self-employment in private practice after qualification.
What to expect
- You will have a lot of contact with colleagues, clients, trade marks registry officials and with European and international authorities, both in person and by telephone and email.
- The dress code is smart/business, especially for meetings with clients.
- The work involves meeting deadlines, which can sometimes be challenging if notice is short.
- Most trainee vacancies are in London or the South East, although qualified trade mark attorneys also practise in large cities across the UK.
- Trade mark attorneys working in the corporate sector are based at one office or location but may need to travel periodically to other locations in the UK or overseas. Overnight absence from home is generally uncommon, but there are opportunities for overseas work and travel.
Many firms with intellectual property (IP) departments take on graduates as trainees and will give you time off to study to become qualified. As a new trainee you will generally work under the direct supervision of one or more qualified trade mark attorneys and learn the relevant law and practice on the job.
You'll need a degree, at least a 2.2 classification, to be accepted onto the qualification process, unless you have substantial relevant work experience as, for example, a trade mark administrator or paralegal. Employers look favourably on a law degree when employing graduates, and this can exempt you from a small number of the trade mark attorney qualification exams. However, it’s not compulsory and degrees in modern languages, business and the arts, amongst others, are welcomed.
In order to qualify you'll need to complete a minimum of two years' work as a trainee under the supervision of a qualified registered trade mark attorney or other suitable professional. You'll also need to register with the ITMA and study for the following professional exams while you're working:
- either the postgraduate Certificate Trade Marks Law and Practice (a one-year, part-time course at Queen Mary University of London) or the Postgraduate Certificate Intellectual Property at Bournemouth University (delivered online with three block weekends taught in Bournemouth);
- followed by the Professional Certificate in Trade Mark Practice, run by Nottingham Law School. This course runs part time over one year.
Check with the individual course providers for full details of entry requirements and course fees.
If you're a qualified solicitor or barrister you may be exempt from some of the modules of the law and practice stages, depending on how much intellectual property experience you have.
On successful completion of this period of training you are eligible to be entered on to the Register of Trade Mark Attorneys.
You will need to have:
- excellent written and oral communication skills to work with your clients and their advisers, e.g. solicitors or barristers;
- the ability to work as part of a team;
- attention to detail;
- commercial and cultural awareness;
- self-motivation (as training examinations are very demanding and balancing work, life and study can be challenging);
- excellent time management skills to keep to strict deadlines;
- an interest in branding and marketing issues.
As this is a relatively small profession, and even large firms often recruit no more than two graduates each year, competition for jobs is keen. Getting involved in the law or marketing-related societies at your university will help you show employers your interest in the sector and in branding issues.
Working as a trade mark administrator or paralegal can be a good route into becoming a trade mark attorney and provides valuable relevant experience.
You will usually start your career by working for a firm of trade mark attorneys with a department specialising in intellectual property (IP) work. You can also work for a large company with a specialist in-house IP department dealing with their trade mark affairs. Companies that employ trade mark attorneys in-house include:
- major manufacturing companies of products such as cars and food;
- national or multinational companies with a high-profile portfolio of product brands.
As well as general trade mark work for a range of companies, some firms specialise in supporting clients in particular sectors. These include:
Firms of solicitors are increasingly developing trade mark departments and employing trade mark attorneys.
Look for job vacancies at:
- The Institute of Trade Mark Attorneys (ITMA)
- IP Jobs
- Legal Week Jobs
- Patent and Trade Mark Jobs
- Totally Legal
Specialist legal recruitment agencies also handle vacancies:
Speculative applications can also be made to companies by sending a well-researched CV and cover letter.
Once qualified as a trade mark attorney, you'll need to contact the Intellectual Property Regulation Board (IPReg) to go on the Register of Trade Mark Attorneys. Once you're on the register you can apply for ordinary membership of the ITMA, which gives you access to a network of support and activities.
You'll need to complete at least 16 hours of continuing professional development (CPD) a year in order to remain on the register. This can include attending, or speaking at, training, events and conferences run by organisations such as ITMA, as well as reading the specialist press to keep up to date with changes in trade mark law throughout your career.
Post-qualification courses in intellectual property litigation and advocacy are available at Nottingham Law School. These courses are aimed at trade mark attorneys with at least two years' experience in intellectual property practice and provide you with the necessary skills to represent clients during litigation as a trade mark litigator.
The job titles in an organisation's hierarchy vary between firms, but there are essentially only three grades in the profession: trainee, part-qualified and qualified. However, with experience and training there is a lot of scope for career progression.
Movement between private practice and industry is common, and experience of both is welcomed. Private practices tend to be firms that sell their experience to clients. In corporate practice or industry, you'll be employed by an organisation that generates a substantial amount of trade mark work.
The ultimate achievement is probably to become a partner in a firm, if not the owner. For this route, you need to be interested and skilled in running a business and related activities, such as managing staff and marketing.
The increasingly complex nature of UK and international marketplaces and growing competition in many commercial sectors means that the range of roles and career paths for trade mark attorneys is likely to broaden.