Trade Mark Administrator

TRADE MARK AND DESIGNS ADMINISTRATOR / PARALEGAL

Our client is a thriving London IP boutique. Now in its fourth year and rated by the likes of WTR 1000, the firm’s offices sit in the heart of Farringdon, one minute's walk from Farringdon station.

Clients of the firm are famous and diverse, and the firm punches far above its weight in terms of its client base. The successful candidate will advise on trade marks and designs for numerous international music celebrities and major corporates. The work will be hands-on: trusted to email, speak and liaise with the clients and their other instructing advisors directly.

This role spans both trade mark administration and paralegalling – approximately 80% or more of the successful candidate’s time will be spent on trade mark and design administration, but they can also expect the remainder to span some elements of paralegal work (preparation of witness statements and exhibits, correspondence with opponents, etc).      

Educational / Work Qualifications

Given the level of legal knowledge and client skills required, and the level of trust the firm will place in the successful candidate to deal directly with its clients, the firm seeks well-qualified candidates:  

• Good 2:1 or higher degree – law preferred but not required. ITMA / Queen Mary qualifications welcome.  

• 2 – 4 years’ relevant experience at another recognised UK IP firm working in trade marks and designs, or working in-house in the trade mark and designs field. Pure patent / tech backgrounds will not be considered.   

• Written English must be of an excellent standard – the ability to quickly, accurately, and perfectly craft clear reports and advice is critical to the role.  

• Excellent IT skills, including the use of Outlook, Word, and Excel.

Personal qualities

• Keen to learn, develop and take responsibility for their advisory work output – the firm expects a sound level of existing legal knowledge / client skills in the field of trade marks and designs upon joining. The partners will be fully on hand (indeed, delight in) helping develop that knowledge and those skills. But ultimately, the candidate must absorb and deploy them! The candidate therefore needs to be someone who sees the law and its practice as central to their daily job: taking on board input from the partners, but also independently reading, absorbing and making use of statute, case law and registry rules and practice as part of their job.

• Client focused – expected to deal with client requirements and needs promptly, as and when they arise.

• Happy to work informally when needed and formally as needed – day-to-day in the office, we're not suit wearers. But our work is of the highest standard and competes with the biggest of London firms.

Experience

Candidates must have experience of most if not all of the following:

• Filing and registering trade marks at UK and EUTM level, including priority claims. 

• Filing and registering EU design applications, including priority claims.

• Liaising with foreign attorneys to prepare and file foreign trade mark and design applications.

• Converting EUTMs marks into national marks.

• Filing divisional applications at UK, EUTM and foreign levels.

• Dealing with trade mark renewals, recordals and licences.

• Docketing deadlines on an electronic system such as IPPO.

• Ordering UK/EUTM searches, analysing results, and reporting to the client on risks / opportunities / views.

• Instructing foreign attorneys to conduct trade mark searches.

• Proving use.

• Preparing and filing oppositions, including extensions of cooling off periods, suspensions, notices of appeal and written statements of grounds.

• Preparing and filing invalidity and revocation actions.

• Drafting witness statements for use in oppositions, invalidity actions and revocation actions.

• Researching matters of law and practice (whether based on statute, case law or registry Handbooks / Practice Notes / Guidelines), and building the same into their work output.

• Generally, preparing cease and desist letters and undertakings, but specifically correspondence with the opponent in the context of oppositions, invalidity actions and revocation actions.