Trade Mark Paralegal

Please reference CITMAP1 in subject line when making application. 

Overview

We are seeking an experienced and CITMA-qualified Trade Mark Paralegal to join our dynamic and rapidly growing Trade Marks, Copyright & Designs team. This is a fantastic opportunity to work on a diverse and exciting client portfolio, supporting a busy and fast-paced practice. The ideal candidate will be confident, organised, and able to hit the ground running in a high-performing team environment.

Key responsibilities:

• Assisting in the management of global trade mark and design portfolios.
• Preparing and filing UK trade mark and design applications, as well as filing applications for International Registrations before the WIPO, and instructing local attorneys on national applications.
• Assisting with preparing and filing forms at the UKIPO, including but not limited to changes of ownership/address, notices of threatened opposition, oppositions, and cancellations.
• Preparing and filing responses to straightforward office actions before the UKIPO and provisional refusals before the WIPO.
• Opening new client matters, including assisting clients with our onboarding process, and following necessary due diligence steps.
• Ensuring trade mark records are kept accurate and up to date, including docketing and verifying official deadlines received from the UKIPO, local attorneys, and general correspondence. This will entail monitoring incoming correspondence, accurately updating trade mark records and ensuring deadlines are met.
• Filing emails and documents to our document management system, ensuring that records are kept accurate and any relevant correspondence/documents are easily accessible.
• Preparing reporting emails to clients including but not limited to reporting filing receipts, publications, registration certificates, renewal certificates, and change of ownership/address recordals.
• Assisting clients with trade mark and design renewals, including preparing schedules, receiving instructions from clients, attending to UK renewals, and instructing overseas renewals.
• The ideal candidate will be well versed at requesting any necessary documents from clients which are required for overseas trade mark applications and renewals, such as Powers of Attorney, and will also have experience of legalisation and notarisation.
• Preparing and collating cost estimates for trade mark and design filings, recordals, and renewals, as well as other cost estimates where required.
• Working closely with our finance team and assisting with approving invoices for official fees and local counsel fees. 

Requirement qualifications and experience

Qualifications:

• CITMA Paralegal qualification (required)

Experience:

• Minimum of 2 years’ experience as a trade mark paralegal or in a similar IP-focused role.

Skills:

• In-depth knowledge of UK and international trade mark and design formalities.
• Exceptional organisational and time management skills.
• High attention to detail with a proactive approach.
• Strong communication skills (written and verbal) for client and colleague interactions.
• Proven ability to work both independently and as part of a collaborative team.
• Competence in database and document management systems.

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