View

CITMA Trade Mark Paralegal

APPLICATIONS OPEN UNTIL

Wednesday 27 August

We are looking to hire a CITMA Trade Mark Paralegal to be based at our Manchester office!

We are seeking a highly experienced and motivated CITMA qualified Trade Mark Paralegal to join our vibrant and flourishing Trade Marks, Copyright & Designs team.

You will play an integral role in supporting the day-to-day functioning of the team and have the opportunity to work with some incredible clients. As this team is quickly expanding and the work is fast paced, we are in search of an individual who is well established and confident in their skills, who will be able to hit the ground running.

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.

Required Qualifications and Experience:

- CITMA Paralegal qualification.

- 3+ years of experience as a trade mark paralegal or in a similar role.

Skills:

- Strong understanding of trade mark and design processes / formalities in the UK and overseas.
- Detail orientated and proactive approach to all tasks.
- Excellent organisational and time management skills.
- Ability to work independently and as part of a team.
- Exceptional written and verbal communication skills, with the ability to liaise professionally with clients, colleagues, and local attorneys.
- Proficient at database management.

Hybrid working:
We operate a hybrid working model requiring employees to be in the office three set days per week, with the flexibility to work from home on the remaining two days.

  • London

    Old Pump House
    19 Hooper Street
    London
    E1 8BU

  • Manchester

    Floor 1
    31 Princess Street
    Manchester
    M2 4EW

  • Call Us

    London
    +44 (0) 203 709 8957

    Manchester
    +44 (0) 161 464 9237

    Email

    info@brandsmiths.co.uk

  • Useful Links

Brandsmiths is a trading name of Brandsmiths S.L. Limited which is authorised by the Solicitors Regulatory Authority, SRA No: 620298. Founding Partner: Adam Morallee

Privacy and Cookie Policy | Terms and Conditions | Complaint Procedure | Site by: Elate Global