- Assist with, and prepare estimates for, pre-filing searches
- Prepare estimates for TM filings
- Liaise with local attorneys over foreign filing and priority requirements
- 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
- 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
- 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
- Proactively review diary and prepare and send renewal reminders
- Record registrable transactions at UK and EUIPO
- Assist with watching and searching
- 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
- 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
Trade Mark Paralegal - London, United Kingdom - Mishcon de Reya
Description
The services provided by our Brands group embrace the full life cycle of a brand, from creation through to protection and enforcement. We are experts in trade mark and design filing, but we go beyond this to add value to our clients by playing a strategic advisory role - finding the right legal strategy to fit their commercial strategy. We 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
Prosecution
Deadline Management
Disputes
Renewals and Trade Mark Maintenance
General
Skills/Experience
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.
About The Mishcon de Reya Group
The Group is an independent international professional service business with law at its heart, employing over 1450 people with close to 670 lawyers. It includes the law firm Mishcon de Reya LLP and a collection of leading consultancy businesses that complement the firm's legal services. We have grown rapidly in recent years, showing more than 40% revenue growth in the past five years alone.
Based in London, Cambridge, Oxford, and Singapore, with an association with in Hong Kong, the firm services an international community of clients and provides advice in situations where the constraints of geography often do not apply. The work we undertake is cross-border, multi-jurisdictional and complex, spanning six core practice areas: ; ; ; ; ; and .
As of 1 January 2023, Mishcon de Reya and merged. The merger delivers on both firms' strategies to support the innovation economy and accelerate our growing share of the technology, media and life-sciences legal and consultancy services market in the UK and in key international innovation hubs globally.
In times of such far-reaching and profound change we want to be the law firm that enables our clients - and our own people - to shape the world's possibilities. We are here to help our clients benefit from new economies, new geographic centres of wealth, the new global movement of people and capital, and the impact of new technologies and new knowledge.
Our purpose remains rooted in our founding values. We take pride in the diverse range of people who make up the firm and are proactive in driving change and continuous improvement across the spectrum of equality, diversity and inclusion., our in-house place of learning, development and new thinking for our people, clients and contacts and our innovative impact strategy, including a , also play a central strategic role in the direction of the firm. In 2020 we launched , a first-of-its-kind sustainability practice providing Environmental, Social and Governance (ESG) advice and purpose-driven insight to clients.
The comprises standalone businesses , , , (in London, Singapore and Dubai) and. Complementary to Mishcon de Reya's core areas of work, each is led by best in class professionals recruited from a variety of non-legal industries and sectors.
We strive to create a fully diverse and inclusive workplace where all our people are empowered to fulfil their potential. We are proud of our agile working culture and are always happy to talk flexible working.
(No agencies please)