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
The Mishcon
de Reya 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 Karas So LLP 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:
Corporate;
Dispute
Resolution; Employment;
Innovation;
Private;
and Real Estate.
As of 1 January 2023, Mishcon de
Reya and Taylor
Vinters 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.
Mishcon Academy, our in-house place of learning, development
and new thinking for our people, clients and contacts and our
innovative impact strategy, including acommitment
to be a net zero carbon business, also play a central
strategic role in the direction of the firm. In 2020 we launched Mishcon
Purpose, a first-of-its-kind sustainability practice providing
Environmental, Social and Governance (ESG) advice and purpose-driven
insight to clients.
The Mishcon
de Reya Group comprises standalone businesses MDR
Brand Management, MDR
Cyber, MDR
Discover, MDR
Mayfair(in London, Singapore and Dubai) and
MDRx. 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.