Trade Mark Attorney

Trade Mark Attorney (0-3 years PQE)

Greater London House, Mornington Crescent, London

37 Hours per week 

The Story so far…

ASOS burst on to the scene in 2000 and hasn’t looked back. We are the UK’s number one fashion and beauty destination, and as a recent survey showed, we are the second most visited fashion website on the planet. We ship to over 230 countries and also have specific sites targeting our core markets. With much excitement we opened our office in Sydney in January 2012 and New York in September 2012, France and Germany following soon after. This is all part of our strategy, which we call ASOS Future.

Our ambition is to be the no.1 online fashion destination for 20-somethings, globally, and we’ve set ourselves a target to reach £1bn annual sales by 2015. Therefore it is really important to us that we continue to attract top talent across the globe to help us realise our goals.

The ASOS Way

We do things a certain way - The ASOS Way.  It’s our DNA and runs through every single thing we do here - it defines who we are, what we do and how we do it. Some things change, these don’t.

We are Passionate; we are proud to be a part of ASOS, we always give our best and we celebrate our successes.

We are Customer Obsessed; we know our customers love fashion and we understand what they want, we know our stuff inside and out, we put our customers at the heart of everything we do.

We are Restlessly Innovative; we don’t stand still, we give it a go and we’re brave.

We are Collaborative and Respectful; We work together to get the job done, we grow ideas from within, we make things happen and we do the right thing.

People are the future of our business and we have really big ideas. We know we need people who can turn these ideas into reality – it’s our people that make the difference.

A bit about the Team:

The Trade Mark Attorney is a junior member of the Legal & Company Secretarial Department which is responsible for providing legal, company secretarial & risk management support and expertise across all areas of ASOS. 

This is a small team, that covers a lot of ground, and it can only do that by being flexible, adaptable and agile – both within the business and between themselves. 

More about the Role:

The Trade Mark Attorney is a key member of the IP Legal Team which manages the ASOS trade marks and all legal aspects of the ASOS brand. Ideally suited for a 2 year PQE Trade Mark Attorney, this role will be critical in helping ensure that the Department meets the intellectual property needs and requirements of all elements of ASOS’ business across the globe, requiring the ability to give commercial as well as legal advice, to operate comfortably and effectively in many different jurisdictions to ensure that the ASOS brand is adequately protected, and to promptly identify risks and issues that need to be escalated within the Company.  The rolerequires someone who is hands on and commercially minded, with a strong professional ethic and the energy, interest and training to pursue a broad array of corporate, commercial, legal and risk/reputation management matters.  This is a role with great potential for the right candidate to quickly grow their level of experience, responsibility and autonomy.

Responsibilities

Protection of the ASOS brand name through Trade Marks & Domain Names

• Implementing the current ASOS Trade Mark strategy by managing(a) the application, registration & maintenance of all applicable Trade Marks in all applicable jurisdictions whose registrations are appropriate for ASOS under that strategy, including assisting with the collection of evidence in order to maintain such registrations, ensuring that all relevant action is taken to address any issues, and once registered that all trade marks are renewed and kept up to date (b) the maintenance of ASOS’ trade mark database and (c) the opposition to any third party trade mark applications that may be detrimental to ASOS’ trading activities where appropriate, using internal and external resources as appropriate

• Assisting Senior Brand & IP Manager and/or IP Legal Advisor with handling material intellectual property litigation, in particular trade mark infringement actions, trade mark oppositions and/or office actions, and unfair competition claims, in line with ASOS’ global IP litigation strategy,at each step ensuring that ASOS’ position is supported as robustly as possible

• Ensure regular instruction and cost effective management of external trade mark agents, including (i) acting as primary contact for ASOS’ external agents, (ii) managing the quality and quantity of the work carried out by external trade mark associates and (iii) helping to secure direct discounts and fee deals.

• Responsible for maintaining quality control and minimising the costs of managing ASOS’s trade mark portfolio, liaising with the relevant business departments to obtain evidence of trade mark use and evidence required for trade mark oppositions.

• Implementing the current ASOS domain name strategy by managing (a) the registration of all applicable domain names whose registrations are appropriate for ASOS under that strategy, and (b) the closure and recovery of unauthorised or illegal third party domain names that may be detrimental to ASOS’ trading activities where appropriate under that strategy, using internal and external resources as appropriate.

• Ensuring that the external resources used by ASOS in relation to its trade mark and domain name portfolios are appropriate in terms of skill sets and cost efficiency, in each area in which ASOS trades.

Skills, qualifications and experience you will need:

Communication iskey to any role in this team, as our team members continually build relationships at all levels across the business, at the same time as working together to deliver what’s needed, when needed, by whatever means necessary.  All team members must be approachable & capable of adapting their approach and communications to ensure excellent inter-action with the wide variety of people and personalities across the unique environment of ASOS.We’re also fast paced, so all employeesalso need to be able to cope with change pretty quickly, and be enthused and excited about what’s around the corner for us.

Experience

• International Trade Mark Association qualified Trade Mark Attorney with 0-3 years PQE

• Significant trade mark registration and prosecution experience gained at a leading trade mark attorney firm or in-house

• Experience of IP law and in particular of complex trade mark litigation and disputes, around the world and in particular in the USA, Germany, UK and rest of Europe

• Previous experience working in an fast-growing, agile, adaptable in-house commercial environment preferred

• We support your professional development and will work with you to ensure you continue to build your technical and commercial experience during your time with us.

Skills & Qualifications

• ITMA qualified
• Excellent IT skills, particularly in relation to the use of Word, Excel and PowerPoint

We really love hearing from you but before applying please ask yourself the following…

• Is this role a good match for the direction I’d like to take my career in?   We want to really know why you have chosen this career.
• Do I have all the skills and experience required for this role? Be realistic. We will only consider applications that demonstrate relevant skills or the potential to match the role requirements. 
• Spell Check. As simple as it sounds make sure your application is to the highest standard. You will be surprised at how many people submit applications with spelling mistakes on them.