Trade Mark Paralegal


26 days ago


London & South East


Central London




30th Sep 2020


Hansel Henson


Private practice

We are seeking a maternity cover (with a guaranteed minimum contract of 12 months) Trade Mark Paralegal to join our busy team in a Central London firm of solicitors. It is essential that the candidate has at least 2 years’ solid day-to-day experience with trade mark registry matters as a paralegal. This role would suit an ambitious individual who is looking to develop their skills and experience in a dynamic, supportive and fun environment.

This role is intended to be office based, with flexibility to work from home as needed depending on current government guidance. As a result, any applicant will be required to live within commuting distance of our Central London office.

About The Firm

Hansel Henson is a firm of solicitors specialising in Intellectual Property and Media. The firm is recognised in both the Chambers and Legal 500 directories for both these complementary areas of work despite having only been set-up in 2009.

The firm currently consists of four Partners, two further Solicitors and a Trainee Solicitor, two Consultants and a Trade Mark Paralegal. Justine Flockhart is the Partner with overall responsibility for trade marks and David Lutkin is a very experienced Trade Mark Attorney who is a Consultant to the firm.  They are both supported by the Trade Mark Paralegal.

Our clients range from household names down to start-ups, and are in a wide range of sectors, though the firm has a particularly strong digital media practice and in consumer facing fields such as fashion, retail and the like. It is a friendly, forward looking firm doing really interesting work!

The firm has a busy trade mark portfolio and it is active in filing UK and, currently, EU TMs, International filings through the Madrid Protocol and working with foreign associates. We cover trade mark prosecution work, oppositions/cancellations, maintenance  and trade mark clearance searches.

Additionally, the firm advises clients on the protection, exploitation and enforcement of other intellectual property rights as well as, media law and commercial contract drafting and other non-contentious work. We would envisage the successful candidate working as part of a team and also gaining exposure to all our workload, dealing largely, but not exclusively, with trade marks.

Key Requirements

At least 2 years’ trade mark paralegal experience in private practice or in-house trade mark department and the following skills:

  • Knowledge of trade mark law and practice
  • Strong organisational skills
  • Ability to work on multiple things in any one day
  • Ability to work to deadlines
  • Strong attention to detail
  • Good computer skills
  • Ability to work independently and as part of a team
  • Good interpersonal and communication skills with a flexible approach
  • Keen to learn and progress
  • CITMA Paralegal course or part qualification in trade mark attorney desirable

Job details

The job will include the following:

  • Preparation for Brexit
  • Conducting trade mark searches, analyzing results and preparing reports
  • Preparing cost estimates and invoicing for trade mark work
  • Maintaining trade mark records and files – experience of WebTMS is desirable
  • Preparing official registry forms
  • Drafting specifications
  • Reviewing monthly watch services and reporting accordingly
  • Renewals
  • Preparing evidence and submissions for opposition and cancellation actions
  • Recordal of Assignments, change of name, representatives etc
  • Managing diary entries for official deadlines and reminders
  • Liaising with overseas trade mark associates
  • Checking and sending out certificates and other official communications
  • Assisting with IP due diligence for corporate deals
  • Reviewing trade mark portfolios and assisting with IP audits
  • Preparing documents for hearings
  • Proof reading, copy checking, indexing, archiving
  • General office support to our busy team

If you are interested

Please email David Hansel

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