Trade Mark Paralegal

This is a fantastic opportunity for someone looking to develop within a trade marks practice, and will suit a candidate looking to step into a senior paralegal role and grow their trade mark experience.

The Paralegal will be the main point of contact for enquiries relating to the portfolios that they support both internally and externally with clients and will be responsible for diary management, working both independently and as part of a team.

This is a rare opportunity for someone to gain experience with direct client contact so excellent interpersonal skills, as well as accurate written and verbal English language skills, are essential.

The Department

The services provided by the Brands group embrace the full life cycle of a brand, from creation through to protection and enforcement. They are experts in trade mark and design filing, but they go beyond this to add value to their clients by playing a strategic advisory role  - finding the right legal strategy to fit their commercial strategy. They have strong relationships with industry bodies across a variety of sectors and work closely with the UK and EU Intellectual Property Offices, and the World Intellectual Property Organisation.

Duties and Responsibilities

Pre-Filing:

• Assist with, and prepare estimates for, pre-filing searches
• Prepare estimates for TM filings
• Liaise with local attorneys over foreign filing and priority requirements

Prosecution:

• Preparing and filing trade mark applications
• Monitor status of applications in electronic diary and pro-actively engage with local attorneys
• Respond to objections and prepare and file Extensions of Time and reports of publication, Registration as required

Deadline Management:

• Review and interpret all correspondence for relevant deadlines and add/review appropriate deadlines and reminders
• Actively manage the diary and all deadlines on assigned matter

Disputes:

• Prepare reports of opposition/cancellation timetable, and cooling off/suspension requests
• File oppositions, and assist in obtaining advice from overseas agents
• Support collation of evidence of use, and evidence of registration in other jurisdictions

Renewals and Trade Mark Maintenance:

• Proactively review diary and prepare and send renewal reminders
• Record registrable transactions at UK and EUIPO
• Assist with watching and searching

General:

• Correspond directly with agents and clients, and work closely with team members to manage their correspondence
• Update client TM reports
• Assist with administration within practice as required

Skills/Experience

• Minimum of three years' experience as a Trade Mark Paralegal
• Ability to carry out all aspects of trade mark and design formalities work accurately
• Excellent interpersonal/communication skills, with the ability to build strong relationships both externally and internally across the Firm
• Ability to stay calm and work well under pressure
• Ability to prioritise workload and demonstrate flexibility when required
• Detailed working knowledge of trade mark application processes in UKIPO, EUIPO and WIPO
• Excellent attention to detail and diligent management of deadlines
• Ability to work independently without supervision, as well as being able to work as part of a close team
• Flexible and proactive approach with a 'can-do' attitude
• CITMA Paralegal qualification desired
• Thorough knowledge of working with a trade mark database required
• Knowledge of Darts and Saegis desired

Please note that this job profile is not an exhaustive list of duties but merely an outline of the key components of the role. You may be required by your line manager to take on additional responsibilities when requested.

If you're interested in this role, please apply via the link below.

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