I am a senior trade mark attorney at HGF Limited. I joined the IP profession in 2017 and qualified as a chartered trade mark attorney in November 2020, after having received 3 years of training in a private practice firm and also passing two post graduate courses during that time.
My practice mainly consist of:
- Trade mark prosecution, which can include clearance searches, trade mark filings and trade mark watches;
- Contentious trade mark matters, which consist of liaising with adverse parties, negotiating settlement agreements and undertakings, or pursuing and defending opposition matters. Oppositions can include the drafting of submissions and evidence gathering;
- Designs, which can include filings as well as invalidity actions;
- Domain names, which can include registering a domain name on different registrars as well as bringing or defending disputes.
In summary, my role as a trade mark attorney is to help companies and individuals grow their business and add value to their brands, whilst also protecting them against third parties who may use confusingly similar signs for similar or identical goods and services. The clients I work with are varied and can come from any commercial or industrial sector.
A typical day in my life could therefore involve working on a trade mark opposition matter, to advising a client on how they should change their logo so that it doesn’t run into any issues with third parties, to being involved in the design process of their products. There are instances where I find myself on a call with a foreign associate, discussing ongoing matters in their jurisdiction or in the UK. On average, I work on at least five different cases a day.
The role of a trade mark attorney can therefore be tough. It is very deadline driven, and with so many matters going on at once, it’s imperative to be organised to stay on top of everything. That’s why it’s important to have a good working relationship with others in your team, who you will work with on a daily basis, and help you by diarising deadlines, recordings tasks and following each case attentively. I am lucky to work with a very good team, which includes paralegals and administrative assistants, as well as fee earners who I can bounce ideas off of.
Aside from this, I do a lot of business development, meaning that I travel frequently for work. This could include visiting client sites, attending conferences such as INTA (the biggest annual trade mark conference) and meeting up with foreign associates with whom I work closely. I also regularly write articles for different publications, such as the Trademark Lawyer. As I am constantly in contact with clients and foreign associates, the profession has led me to make some really good friends across the world.
In addition, I am involved in external working groups. For example, I am part of the CITMA Review Working group. The CITMA Review is a bimonthly magazine, published by the Chartered Institute of Trade Mark Attorneys. Here we identify and discuss new topics which are of interest to the profession, and organise pieces to be published in the CITMA Review. A recent piece I did was a collaboration with the Korean Patent Attorney Association on Korean trade mark practice.
I am also part of HGF’s Diversity, Equality and Inclusivity group, where we aim to raise awareness of important issues and make the workplace more welcoming. I am constantly learning from my colleagues in this group and find it really rewarding to be part of such an insightful group with important objectives. One recent success that my colleagues achieved was to introduce a new maternity and paternity leave policy, which includes 26 weeks of leave at full pay. This has been ground-breaking in the IP profession.
The role of a trade mark attorney is therefore varied. The job can be serious, but also fun and exciting. There are many opportunities to continue learning about the law, how to develop your communication skills, your ability to network, as well as becoming more aware about issues that we may face in any workplace, and how to tackle these.
Senior Trade Mark Attorney / HGF Limited
Last Updated: October 30, 2024