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Position available: Trade Mark Paralegal/Part Qualified Trade Mark Attorney

We are seeking a Trade Mark Paralegal/ Part Qualified Trade Mark Attorney 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. This role would suit an ambitious individual who is looking to develop their skills and experience in a dynamic, supportive and fun environment.

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 three partners, two further solicitors, a trade mark attorney, two consultants and a general 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.  The role is filling the position of a trade mark attorney who qualified shortly after joining the firm two years ago.

Our clients range from household name brands through 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 advises clients on the protection, exploitation and enforcement of all intellectual property including trade marks. We also advise on, media law and commercial contract drafting and other non-contentious work. We would envisage the successful candidate working as part of a team and gaining exposure to all our workload, dealing largely, but not exclusively, with trade marks.

The firm is active in filing UK and EU TMs, International filings through the Madrid Protocol and working with foreign associates. We cover prosecution work, oppositions/cancellations, maintenance (eg renewals and assignments) and trade mark clearance searches.

Key Requirements

At least 2 years’ trade mark experience in private practice or in-house corporate 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:

  • Conducting trade mark searches, analyzing results and preparing reports
  • Preparing cost estimates and invoicing for trade mark filing
  • Managing and updating trade mark database
  • Maintaining trade mark records and files – experience of WebTMS is desirable
  • Preparing official registry forms
  • Drafting specifications
  • 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
  • Undertaking legal research
  • Precedent management
  • Supervising our paralegal who will assist you in the administrative aspects of the above

If you are interested:

Please email David Hansel, dah@hanselhenson.com

No agencies

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