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Job

Trade Mark Paralegal

💼 Graduate Job

London

AI generated summary

  • Experience in trade marks practice, ability to handle formalities work accurately, strong interpersonal and communication skills, ability to work under pressure and manage deadlines, detailed knowledge of trade mark application processes, CITMA Paralegal qualification desired, ability to work independently and as part of a team, proactive attitude, thorough knowledge of trade mark databases required.
  • The Trade Mark Paralegal will be responsible for assisting with pre-filing searches and filings, managing deadlines, handling disputes, renewals, and trade mark maintenance, corresponding with agents and clients, updating reports, and providing general administrative support within the practice, all while working closely with team members and local attorneys.

Graduate Job

LegalLondon

Description

  • 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.

Requirements

  • Minimum of one years' experience either within a trade marks practice
  • 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

Education requirements

Bachelors

Area of Responsibilities

Legal

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

Details

Work type

Full time

Work mode

office

Location

London