Trade Mark Paralegal

Job Description

Salary: Not specified

Experienced Trade Mark Paralegal - Farringdon, London

Salary: Highly Competitive

Hours: Full-time

The Company:

Our client is a thriving London IP boutique, specialising in trademarks and designs. Now in their eighth year, they are a highly rated firm with offices in the heart of Farringdon.

They act for a suite of famous brands, particularly in the entertainment, music, sport, publishing and fashion sectors, including some famous household names!

The Role:

Our client are urgently looking to recruit a permanent, capable and self-motivated Trade Mark Paralegal to join their team as soon as possible.

The role is varied, challenging at times but professionally very rewarding. The office environment is casual and fun, as our client pride themselves on taking a different approach to their work.

To be considered for this vacancy, it is essential that you have hands-on experience as Trade Mark Paralegal.

Job Responsibilities:

Selection of the core day-to-day work involved is as follows:

• Drafting specifications and filing and prosecuting trade mark applications through to registration at the UKIPO and EUIPO;

• Filing and registering UK and EU design applications;

• Liaising with foreign attorneys to prepare and file foreign trade mark applications, including resolving specification queries and refusals on the relative grounds;

• Preparing arguments and written evidence at the UKIPO and EUIPO on the absolute and relative grounds;

• Drafting cease and desist letters;

• Dealing with trade mark renewals, recorders and licences;

• Docketing deadlines on our electronic system (IPPO/WebTMS);

• Ordering UK/EUTM searches, assisting with the analysing of results, and reporting to the client on risks/views;

• Instructing foreign attorneys to conduct trade mark searches;

• Filing and assisting in the drafting of oppositions, including extensions of cooling off periods, suspensions, notices of appeal and written statements of grounds (supported by a partner);

• Preparing and filing invalidity and revocation actions (supported by a partner);

• General anti-counterfeiting work, including attending anti-counterfeiting and border force events;

• Researching matters of law and practice and building the same into their work output.

Essential Skills & Requirements:

  • The successful candidate must have hands-on experience of a broad range of the above.
  • This role would suit a relevantly qualified and experienced candidate with circa 2 - 3 years' experience who is keen to learn, develop and take responsibility for their advisory work output
  • It is highly preferable that applicants for this role have successfully completed the CITMA Paralegal course, the Queen Mary Postgraduate Certificate in Trade Mark Law and Practice or Bournemouth University's Postgraduate Certificate in Intellectual Property.
  • Attention to detail, concision and clarity.
  • Self-reliance and personal drive.

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Job Summary