Established in 1887, Spruson & Ferguson is one of the largest intellectual property (IP) service providers in the Asia-Pacific with more than 480 staff working from offices in Australia, China (Beijing and Hong Kong), Indonesia, Malaysia, Singapore and Thailand as well as direct filing capabilities in Brunei, New Zealand and Papua New Guinea. Spruson & Ferguson provides a comprehensive range of services for the protection, commercialisation, enforcement and management of all forms of intellectual property. Being the first IP firm in the Asia-Pacific to have a fully-integrated structure across 9 offices, Spruson & Ferguson gives real meaning to the term “One-Stop-Shop”.
THE OPPORTUNITY AND THE CANDIDATE
As Senior Associate / Special Counsel, you will report directly to the Practice Group Leader of the Trademark group and will be expected to take on a range of responsibilities, including but not limited to:
- Conducting Trademark searches.
- Filing and prosecuting Trademark applications through to registration.
- Oppositions and non-use removal actions including attending Hearings.
- Liaising with clients and providing advice.
- Conducting due diligence.
- Managing Trademark portfolios.
In addition to these actions, the expectations of the role include:
- Management of your work quality and ensuring appropriate quality control of work undertaken by you;
- Management of your work timeliness and ensuring appropriate timing of work undertaken by you;
- Management of your day-to-day activities and interacting with relevant professional and support staff members to achieve both your and Spruson & Ferguson’s short and long-term plans;
- Management of administrative functions, including recording of work-in-progress (WIP), management of potential and actual conflicts of interest, management of professional standard obligations;
- Coordinating and communicating with other Principals and practice groups, and corporate group members (as appropriate);
- Participation, as requested, in appropriate marketing activities including undertaking marketing visits to clients, professional organisations and attending at relevant events;
- Participation, as requested, in appropriate professional organisations and other representative industry bodies to promote Spruson & Ferguson;
- Engaging and being pro-active in business development and marketing activities, including local client development and retention;
- Opportunities for development and retention of overseas client and associate relationships, including potential overseas travel;
- Assisting the Principals in securing and maintaining client portfolios;
- Developing and maintaining internal team networks; and
- Such other responsibilities as directed by Spruson & Ferguson from time to time commensurate with your role as a senior professional employee of Spruson & Ferguson.
This role demands an exceptional Attorney with a pragmatic, business-oriented mindset and a hands-on approach, able to make complex decisions, support the team in doing so, and provide strategic IP advice and counsel with a business focus.
The successful candidate will have the following expertise:
- Registered Trademark Attorney or Lawyer with a minimum of 8 years’ experience;
- Knowledge of Intellectual Property law, with a focus on Trademarks;
- Outstanding communication skills, capable of building and maintaining strong, effective relationships in a complex and dynamic environment;
- Strong understanding of current industry trends and initiatives, staying ahead of developments in Trademark law and IP strategies;
- Excellent organizational and time-management skills;
- Strategic mindset, able to align Trademark strategies with broader business objectives and provide actionable advice to clients.
