Trade Mark Records Formalities Assistant

An exciting opportunity to join a busy and innovative formalities team in a real heavyweight in the trade mark field. To be based in any of their Sheffield, Glasgow or Edinburgh offices. 

About the company

CMS is a Future Facing firm with more than 80 offices in over 45 countries and 5,800+ lawyers worldwide. They combine deep local market understanding with a global perspective. They are passionate about building strong relationships with their clients, their people, and the communities they work in.

They take a bold, dynamic, and agile approach to ensure their clients are able to face the future with confidence. They are driven by emerging technologies such as generative AI and readily embrace the possibilities it opens up for developing new and better ways of working. Their aim is to inspire, impact and support their clients and their people, helping them to maximize their potential and thrive.

About the role

CMS has the largest trademark team in the UK comprising 9 partners and 40 associates, with over 25 years’ experience of managing trade mark portfolios. They act for major household names across all sectors, delivering advice on some of the world’s largest trade mark portfolios. CMS offers the full spectrum of Trade mark work: due diligence and transactional; clearance and prosecution; strategic and day-to-day advice including portfolio management; trade mark-related aspects of advertising and marketing; and enforcement. Their dedicated and experienced Trade Mark Records team handles all aspects of trade mark formalities and renewals, bringing greater savings and efficiencies for their clients and maintaining experience and specialism for this important work type. 

In this role, you can expect to get involved in a variety of work including:

• Inputting data on their records system - Patricia.
• Updating records to reflect new deadlines/statuses; providing diary reports to wider team.
• Extensive use of UKIPO and WIPO websites/databases including but not limited to downloading incoming correspondence, preparing and filing various trademark forms such as new applications, renewals, assignments, change of names, etc.
• Dealing with formalities associated with trademark and design applications.
• Preparing and filing UK and International trademark and design applications.
• Liaising with their EU trademark and designs team in Warsaw
• Reporting new trademark/design filings, publications, and checking and reporting registration certificates to client.
• Corresponding effectively with foreign agents; seeking and preparing cost estimates; preparing powers of attorneys etc.; filing assignments/change of names etc.
• Corresponding effectively with clients, seeking instructions, reporting developments etc.
• Renewals – assisting with trademark renewals in the UK and overseas.
• Managing own deadline diary
• Opening, new matters including sending conflict checks.
• Ensuring document management system (DMS) is kept up to date with all correspondence.

You will manage renewals for a number of clients. This includes but is not limited to the following:

• Corresponding effectively with foreign agents;
• Seeking and preparing cost estimates;
• Preparing powers of attorneys etc;
• Filing assignments/change of names etc.

About you

They will invest in your ongoing training and development to support your professional goals and help you to thrive in your role from day one. Their opportunities are open to all suitably qualified applicants, so to be considered for this role, you must meet the following skills and experience:

• Experience of trademark formalities work, to include inputting trade mark data into databases accurately and monitoring deadlines is essential (one year, minimum).
• Self-motivated and proactive attitude are essential. 
• Enthusiastic, confident with good organisational and administration skills. 
• Flexible and able to effectively manage a number of priorities at any one time. 
• High level of accuracy and attention to detail.
• Good Microsoft Office skills.
• Good communication skills, both oral and written.

Desirable qualifications/skills/experience:

• Knowledge of Patricia database would be an advantage but not essential
• Previous experience of a document management system would be beneficial but not essential.

What’s in it for you?

CMS wants to reward you today and help you plan for tomorrow. They appreciate that everyone is different, therefore they have designed a benefits system that offers choice and flexibility based on individual needs and lifestyles. To name a few, these include:

• Competitive basic salary (reviewed annually)
• Flexible, hybrid working policy
• Generous bonus scheme
• Up to 25 days holiday (rising to 28 days with service)
• Holiday exchange scheme
• Private medical insurance
• Enhanced parental leave
• Reasonable adjustments and accommodation for disabled talent in accordance with the Equality Act 2010.

If you would like to read more information regarding the range of benefits, please visit the Rewards & Benefits page on their website.

Ready to apply? Here are the next steps.

CMS looks forward to receiving your application online via the CMS careers site. Please contact their Talent Acquisition team if you have any questions. 

Please note that they have a preferred agency panel in place. Only applications submitted via the portal at the point of instruction will be accepted.

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