Job description

Job Description

JOB DESCRIPTION

Job Title: Trade Mark Paralegal (8m FTC)

Group: Risk Advisory Services, Intellectual Property

Location: Birmingham OR London

Hours of Work: 9:30am - 5:30pm (flexibility required)

Description:

We are currently recruiting a Trade Mark Paralegal for our growing trade mark prosecution team in our London office. This challenging role supports a team with a proactive approach to portfolio management and brand protection.
The firm Pinsent Masons is a global 100 law firm, with over 3,400 employees operating out of 26 locations across Europe, Asia Pacific, Africa and the Middle East. We have a long-standing reputation for delivering high-quality legal advice rooted in a deep understanding of the sectors and geographies in which our clients operate. Our global reach ensures that we are well-placed to advise on complex multi-jurisdictional matters across a full range of legal disciplines.
The firm has significant multinational credentials in the financial services, energy, infrastructure, real estate, and advanced manufacturing and technology sectors. Services provided across these sectors include asset management and investment funds, corporate and M&A, commercial, competition, litigation and arbitration, banking, restructuring, insurance, regulatory, construction, projects, pensions, property, planning and environmental, procurement, outsourcing, employment, share plans and incentives, technology and tax advice. We champion change and promote progress to make business work better for people. Pinsent Masons has embedded a range of diversity and inclusion initiatives to create an environment in which its people can flourish. We operate an agile working scheme, which offers our employees flexibility in terms of where, and how, they work. We stand out for our innovative approach to service delivery. For example, the firm has developed a number of in-house legal technology and project management solutions, operates a hub of freelance lawyers, called Vario, and a global Diversity and Inclusion consultancy, Brook Graham. Put simply, we offer a range of professional disciplines to our clients, enabled by our people, process and technology.
The practice We offer a fully integrated international trade mark and design service which deals with every aspect of intellectual property advice from brand clearance to registration. We assist clients in the management and exploitation of their IP rights through organic growth, licensing, franchising or merchandising. By offering the full range of IP services in-house, we provide a one-stop shop for all of our client's intellectual property, marketing, advertising, licensing and sponsorship needs. In addition to this, our IP litigation team will enforce our client's rights and if necessary, defend them from unwarranted attacks. Our international team of over 60 IP specialists provides a complete solution for the protection, management, exploitation and enforcement of your IP rights.
The selected candidate will provide full administrative services to the trade mark team as well as dealing with national, international and EU trade mark and design applications, renewals and recordal - as further described below. The selected candidate will be one of the points of contact for client enquiries, and must portray a professional and customer centric attitude.

Main Duties and Responsibilities

• Conducting trade mark database searches and compiling search reports.
• Reviewing incoming and outgoing correspondence to identify key information, statutory deadlines, timetables for future activity/requirements and other docketing details.
• Preparing responses and reminder emails to clients on trade mark matters.
• Handling assignment recordals, changes of name, mergers, reclassifications and changes of client/representative.
• Preparing cost estimates for clients.
• Preparing and filing trade mark and design applications.

• Dealing with oppositions; revocation/cancellation actions.
• Handling trade mark and design renewals.
• Preparing trade mark and design schedules.
• Data entry and maintenance of IP management system (WebTMS).
• Due diligence related to trade mark and IPR portfolios including auditing of data from national IPO and other commercial databases.
• Handling docketing diary and proactively dealing with deadlines.
• Coordinating accounts with UKIPO, EUIPO and WIPO.
• Handling official notifications and examination reports.
• Reporting to clients details of new trade mark applications, publication notices, registration and renewal certificates.
• Reporting to clients the timetable of events, deadlines and cooling off periods relating to oppositions and other inter parte actions.
• Handling client enquiries.
• Providing general support to Partners/Fee earners.

Person Specification

Skills and attributes:

• Experience in trade mark formalities and administration activities within a large team environment servicing multi-national trade mark portfolios.
• Excellent attention to detail.
• The ability to work to tight deadlines with each of intellectual property offices, overseas law firm's/trade mark attorneys, internal and external clients.
• A working knowledge of the formal requirements for protecting designs.
• Successful completion of the CITMA Administrator examination or alternative equivalent legal para-professional training track.
• Excellent technical document management skills, including Word, Excel and PowerPoint, with the ability to take complex documents and present simply and concisely.
• Confidence, with proven initiative and a proactive attitude.
• Excellent written and oral communication skills.
• An ability to stay calm in demanding situations in particular when the fee-earners are operating under pressure.
• Excellent, proven organisational skills.
• Proven ability to deal with confidential matters.

In addition, we expect candidates to demonstrate:

• Flexibility
• An ability to build strong working relationships, both internally and externally, where applicable.
• The ability to liaise effectively with fee earners and support staff within the group, but also to liaise and coordinate with people from other relevant disciplines and teams including clients and colleagues oversees.
• Keenness to work in a challenging, team-based environment with flexibility regarding working hours.

This job description is not exhaustive and the job holder may be required to undertake additional duties from time to time to ensure the smooth running of the practice.

Personal Qualities/Behaviours

• Professional appearance and manner
• Flexible and able to use own initiative and requiring limited guidance
• A motivated self-starter who is a good team player
• Must be flexible as overtime may be required at short notice

We only accept CVs that are logged on the Recruitment portal.

At Pinsent Masons we value diversity and inclusion. We are committed to creating a better workplace where all our talent can succeed and feel like they belong. We want to attract, retain and develop people at all levels and encourage applications from all suitably qualified candidates whatever your ethnicity, religion, age, physical or mental disability/ long term condition, sexual orientation, gender identity or expression or any other characteristics protected by local law in the jurisdictions in which we operate.

Job Type: Part-time

Benefits:

• Company pension
• Cycle to work scheme
• Private medical insurance
• Work from home

Schedule:

• Monday to Friday

Work Location: Hybrid remote in London, EC2A 4ES

Reference ID: 1265