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.

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

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 seven core practice areas: Corporate; Dispute Resolution; Employment; Impact; Innovation; Private; and Real Estate.

The Mishcon de Reya Group includes consultancy businesses MDR Discover, MDR Mayfair (in London, Singapore and Dubai), MDR ONE, MDRi (in Hong Kong) 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 about flexible working.

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