We were named European Trade Mark Team of 2016 by Managing Intellectual Property magazine. This recognises the size and strength of Taylor Wessing's European Trade Mark group. This, together with the variety of the brands we represent across all business sectors, means that we have outstanding experience in every area of trade mark and design law. By integrating all aspects of trade mark and design practice into one team, we provide a full IP service, advising not just on clearance, prosecution and portfolio management, but also anticipating and handling litigation. Our team has an excellent track record for successfully resolving brand disputes, including some of the most significant and complex disputes in national courts and the Court of Justice of the European Union.
JOB SUMMARY/PRINCIPAL RESPONSIBILITIES
Working under the supervision of a trade mark attorney, associate, senior counsel or partner, the successful candidate will provide support to the team to assist with the day-to-day running of client trade mark portfolios and pitches for new work. The role includes:
- Preparing schedules of case/portfolio status reports and maintaining action lists, including attending client calls to note new actions.
- Conducting basic trade mark searches, e.g. proprietor searches to establish ownership or otherwise to verify status of registrations.
- Assisting with the review of trade mark search reports and watch notices with supervision from/oversight of fee earners.
- Assisting with the coordination of instructing, gathering in and assimilating into one report the trade mark search reports from foreign associates.
- Assisting with the gathering of evidence, in particular online, for submission in opposition or prosecution matters.
- Undertaking online checks into the use by third parties of trade marks and instructing investigators to do further checks.
- Assisting with the preparation of cost estimates, cost planning and the day-to-day project management of international filing or recordal projects.
- Assisting with Customs notices in various jurisdictions.
- Liaising with foreign associates in relation to basic prosecution matters (conveying instructions to file, assisting with supporting priority claims, liaising with foreign associates in relation to basic specification objections, checking on status of pending matters).
- Assisting with updating some entries in WebTMS/IPPO trade mark management system (mainly done by formalities team).
- Assisting with research to support pitches or presentations.
- Assisting with the preparation of schedules to accompany invoices and with queries raised by clients about invoices and disbursements relating to their trade mark portfolios.
KNOWLEDGE, SKILLS & EXPERIENCE
The role is intended to be for someone with a number of years' experience in a specialist trade mark paralegal role. Candidates should preferably have experience of juggling a high volume of work in different client teams and handled by different client partners. Whilst they will be supervised, they need to be able to work independently, progressing their workload without reminders and ensuring that they deliver on their tasks on time (or otherwise anticipating and communicating efficiently where leeway on timing is needed and can be given). Experience working in an in-house trade mark department of a brand owning company could be useful but not essential. Ideally the candidate will have some experience of direct client contact and/or of liaising with foreign associates.
The following skills are essential:
- Good drafting skills (for liaising with clients and foreign associates).
- Strong attention to detail and accuracy in work.
- Well organised and ability to prioritise and manage own workload.
- Good oral and written communication skills
- Enthusiasm about brands, positive attitude and self-motivated.
Some knowledge of Excel would be useful but training can be given. Less important is knowledge of WebTMS/IPPO or how another trade mark database management system work but, again, that would be useful.