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Job Title
Trade Mark Paralegal
Location
London / Cambridge
Description
The Department
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
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 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
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
TheMishcon
de ReyaGroup is an independent, international
professional services business with law at its heart, employing over
1450 people with over 650 lawyers. It includes the law firm Mishcon de
Reya LLP and a collection of leading consultancy businesses that
complement the firm's legal services.
Mishcon de Reya LLP is based in London, Oxford, Cambridge, Singapore
and Hong Kong (through its association withKaras So LLP).
The firm services an international community of clients and provides
advice in situations where the constraints of geography often do not
apply. Its work is cross-border, multi-jurisdictional and complex,
spanning six core practice areas:Corporate;Dispute
Resolution; Employment;Innovation;Private;
andReal Estate.
TheMishcon
de Reya Groupincludes consultancy businessesMDR
Cyber,MDR
Discover,MDR
Mayfair(in London, Singapore and Dubai),MDR
One,MDRiand MDRx.
The Group also includesMDR Lab, which invests
in the most promising early stage legaltech companies as well as the
Mishcon Academy, its in-house place of learning and platform for
thought leadership.
Earlier this year, the Group announced its first strategic
acquisition in the alternative legal services market, flexible legal
resourcing business Flex Legal. It also acquired a majority stake in
Somos, a global group actions management business.
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.