Trade Mark Paralegal

Term: Contract
Duration: 1 year
Working hours: Full-time
Department: Intellectual Property
Location: Flexible
The firm

Lewis Silkin works with leading businesses to protect and enhance their most important assets - their ideas, their people, their brand and their future. We call it: Ideas. People. Possibilities.

With offices in London, Oxford, Manchester, Cardiff, Belfast, Dublin and Hong Kong, we are recognised by clients and industry alike as being distinct for our unique culture, market-leading practice areas, sector focused approach and for providing solutions to complex, multijurisdictional business challenges, with a pragmatic and human touch. We have two things at our core: people — both ours and our clients’— and a focus on creative, tech and innovative businesses.

Our culture is encapsulated by an ethos of bravery and kindness, guided by our values of Integrity, Clarity, Unity and Excellence (our ‘I-CUE’). We aim to provide a supportive environment for our people, clients and wider community and embrace diversity & inclusion, ensuring people are able to bring their full selves to work.

The department

We have a substantial IP practice within our creators, makers and innovators division with over 50 lawyers, attorneys and specialist support staff practising in this area and are recognised in Chambers, Legal 500 and WTR for a number of IP related fields including trade mark filing and prosecution, IP litigation, advertising, brand management, sport and media and entertainment. 

Our trade mark prosecution client base is varied; from global brand owners to start ups, however, much work is focussed on the following sectors: advertising/marketing, retail, fashion, entertainment, technology, automotive and sports.

The Role

The role is suitable for candidates with previous demonstrable experience as a Trade Mark paralegal.

  • Creating first draft specifications for trade mark and design applications and obtaining other formal details required to file trade mark applications in the UK, EU and overseas;
  • Liaising with the Solicitors/Trade Mark Attorneys and IP administrators for the preparation and filing of forms and related documentation for filing trade mark and design applications; renewals; assignments; licences; changes of name and other title details;
  • Ordering, organisation and conducting of trade mark searches and related search programme administration including assisting with the preparation of the client reports;
  • Assisting Solicitors/Trade Mark Attorneys with internet and other research as directed;
  • Assisting Solicitors/Trade Mark Attorneys with preparation of evidence required in trade mark application and opposition / invalidation / revocation cases;
  • Due diligence related to trade mark and IPR portfolios including auditing of data from national IPO and other commercial databases;
  • Preparation of client portfolio reports;
  • Preparation of quotations for trade mark and design and applications;
  • Trade Mark administration – other duties as may be required to ensure the smooth running of the trade mark administration team;
  • Reviewing the developing needs of the practice to ensure the records database and document management system remains appropriately used and suggesting and implementing procedural changes as required;
  • Liaising with the IP administrators over the management of the docketing diary, for the Solicitors/Trade Mark Attorneys and ensuring that the diary for relevant cases is always current; and
  • Providing absence cover for other team members as required.

Abilities and desired qualities:

  • CITMA qualification desirable.
  • Previous Web TMS experience desirable.
  • Experience of searching on the Compumark Saegis database desirable.
  • Accuracy and attention to detail.
  • Excellent organisational skills.
  • Ability to communicate at all levels.
  • Ability to meet deadlines and work under pressure.
  • Professional in conduct.
  • Punctual at all times.
  • The ability to work overtime when required.

IT skills required:

  • Experience or knowledge of Word, Excel, document management systems and Outlook would be beneficial, although not essential as full training will be provided.

Educational and professional qualifications required:

  • Good grammatical English - at least to GCSE standard or equivalent.
Additional information

At Lewis Silkin our ethos is simple. We strive to do the best for our clients, our people and the communities in which we operate. We recognise that an inclusive workplace allows for all kinds of ideas and thoughts, a variety of points of view that can trigger discussions or deliver innovative results, and a wide range of versatile skills and expertise. We are proud of the diversity within Lewis Silkin and of our culture that allows people to be themselves at work, ensuring we provide the best possible service to our clients. We are committed to finding the right person for this role and are open to discussing flexible working patterns and office location.