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Job Title Formalities Specialist
Location London
Description

The Department

The pace of change in the business world has never been greater. Even before the COVID-19 pandemic, new thinking, technology and business models have shaken up the old and made possible ideas that would have been unthinkable just a few years ago. The Innovation Department brings together expertise from across the Firm, allowing a new level of collaboration and a focus on meeting the needs of clients in diverse and dynamic sectors. Our legal knowledge is underpinned by the latest technology to create better insights, better levels of customer service and increased efficiency for our clients.

The practices within the Innovation Department include those that are well established, recognised as being at the top of their game by the legal industry, and those that we have created in recent years as clients have come to us with new problems to solve and value models to create.

We offer a relentless curiosity for our clients' businesses and sectors, and a passion for finding new ways to help them meet their goals. We have an innate understanding of what drives those creating new ideas, because that's what we are doing within our own business every day.

The Team

We are one of the largest IP teams in London and we help the owners of some of the world's best-known rights create, protect and exploit their IP.

Our team provides our clients with a complete range of IP-related services: trade mark and design portfolio management; patent challenge and enforcement litigation; franchising and licensing, the experience and know-how to take on the role of strategic advisor in pursuit of key business objectives; and handling IP infringements swiftly and tenaciously. Consequently we have a broad range of high profile clients including Sky, Entain (the owner of Ladbrokes and Coral amongst many other gaming brands), Nintendo, Iceland Foods, Dr Reddy's, Hewlett Packard and Alexander McQueen.

Our team has been recognised in numerous legal directories with top rankings for its work. In 2024 we were proud to be awarded UK Prosecution Team of the Year in the MIP Awards after being recognised as UK IP Disputes Team of the Year in 2022 and 2023.

Job Profile

An exciting opportunity has arisen to join our IP team as a Formalities Specialist and to be a part of our dedicated Registry Services team. The role will suit a Trade Mark Paralegal or Formalities Specialist who welcomes the opportunity to contribute to a busy and expanding IP team.

Duties and Responsibilities

  • Enhancing the capabilities of our Registry Services team to deliver a high-quality service to our clients.
  • Handling incoming post and communications and ensuring proper and timely distribution and filing of email correspondence.
  • Accurately recording and maintaining deadlines for all matters in the practice database.
  • Diligently monitoring deadlines and ensuring they are met.
  • Executing the process of trade mark and design renewals.
  • Preparing initial cost estimates for trade mark and design filings.
  • Maintaining and updating the database of foreign agents and client allocation lists.
  • Keeping abreast of updates in UK, EUIPO, and international trade mark practices.

Special Projects

  • There is the opportunity to participate in practice transformation initiatives, focusing on process enhancements to increase efficiency and streamline operations.

Skills and Experience

  • Minimum of two years' experience within a trade marks practice.
  • Ability to carry out all aspects of trade mark and design formalities work accurately and to a high standard.
  • Experience of working collaboratively within a team.
  • Ambitious, with excellent interpersonal/communication skills, and the ability to build strong relationships both externally and internally across the Firm.
  • Excellent IT skills and the interest in using new systems to improve efficiency.
  • Ability to prioritise workload and demonstrate flexibility when required.
  • Excellent attention to detail.
  • Ability to work independently without supervision, as well as being able to work as part of a close team.
  • CITMA Paralegal Qualification preferred.

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 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 with Karas 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 ; and Real Estate.

The Mishcon de Reya Group includes consultancy businesses MDR Cyber, MDR Discover, MDR Mayfair (in London, Singapore and Dubai), MDR One, MDRi and MDRx. The Group also includes MDR 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.

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