Trade Mark Paralegal

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., 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.
  
  Minimum of three years' experience as a Trade Mark Paralegal.
• 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.
  
  Mishcon de Reya is an independent law firm, which now employs over 1400 people withmore than 650 lawyers offering a wide range of legal services to companies and individuals. The firm has grown rapidly in recent years, showing more than 40% revenue growth in the past five years alone.
With presence in London,Oxford, Cambridge,Singapore, Hong Kong and UAE, the firm services an international community of clients and provides advice in situations where the constraints of geography often do not apply. The work the firm undertakes is cross-border, multi-jurisdictional and complex, centred around three increasingly entwined and connected sectors: the Innovation Economy, Private Wealth and Capital, and Real Estate. The firm is known as a disputes powerhouse with a formidable capacity firmwide for dispute resolution. 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.