IP Litigation / Trade Marks Paralegal

London (Central), London (Greater)
16 Apr 2018
21 May 2018
Role Classification
Other Professional
Vacancy Type
Legal Support, Paralegal
Contract Type

We have an exciting opportunity for a trade mark focused Paralegal to join our IP Litigation team in London on a full-time, permanent basis.

The team handle disputes in all forms of intellectual property, whether through alternative dispute resolution, litigation in the national courts or the opposition of trade marks at the UKIPO, EUIPO or in the relevant national offices. We cover a diverse range of issues, including copyright, design, patent and trade mark infringement, opposition proceedings and revocation and invalidity actions.

We have particular expertise in trade mark filing work with a focus on brands and technology. As well as advising a large number of clients in the publishing, FMCG and food and drink industries with the full range of contentious and non-contentious trade mark issues, we are an acknowledged leader in growth areas such as online content licensing and streaming, social media, online broadcasting and gaming.

Our client base includes many leading FMCG, technology and media companies so it’s not surprising that we are a ‘go to’ firm for some of the most complex and novel trade mark/IP questions. The team also regularly manage large trade mark/IP projects and transactions for clients based in Europe, the US and Asia, providing advice on everything from trade mark strategy and prosecution to enforcement and licensing issues.

Key responsibilities

  • Preparing and filing trade marks (and renewals and other trade mark recordals) directly at the UKIPO, EUIPO, WIPO and instructing overseas agents
  • Instructing trade mark searches
  • Effectively and proactively manage client portfolios using WebTMS
  • Proactively take responsibility liaising with clients and local agents and reporting on the prosecution of trade marks
  • Reviewing incoming and outgoing correspondence to identify key information, statutory deadlines, timetables for future activity/requirements and other docketing details
  • Running a docketing diary, issuing reminders to the team's solicitors/trade mark attorneys and ensuring that the diary for relevant cases is always current
  • Due diligence related to trade mark portfolios including auditing of data from national IPO and other commercial databases
  • Trade mark records management – use of the firm's database to ensure all activity is docketed and able to be audited at all times
  • Proactively identify opportunities, actively contribute and be involved with ad-hoc projects as given by the team

Technical skills and experience

You will have experience in trade mark formalities and administration activities including database experience using Web TMS or other similar trade mark databases. You will also have experience of managing large client portfolios and liaising with overseas trade mark agents. Excellent written and verbal communication skills, organisation and time management are also essential.

The CITMA paralegal qualification is also highly desirable.

The candidate

You will: 

  • Demonstrate a 'can-do', positive work ethic;
  • Be decisive, responsible and take ownership of issues that arise;
  • Be flexible and show openness to change;
  • Have a logical approach to working;
  • Have the ability to remain calm under pressure, demonstrating prioritisation skills; and
  • Demonstrate attention to detail (in particular recording data and deadlines).

Salary and benefits

We offer competitive salaries and generous benefits.

For more information or to apply

At Osborne Clarke we welcome direct applications. If you would like any further information about the role or the firm, we would be delighted to hear from you. Please contact, in complete confidence, Emily Webb (Recruitment Manager) on 0117 917 3072 or emily.webb@osborneclarke.com.

This vacancy is for a Paralegal position, it is not an entry route to a training contract at Osborne Clarke LLP – the two recruitment processes are completely separate.

No Recruitment Agencies Please. 

At Osborne Clarke, we are known for our open and inclusive culture. We believe that by investing in the diversity and wellbeing of our people, we create an environment where everyone can thrive to be the best that they can be. This means recognising that our people have lives and commitments outside of work. We have invested in connected working for our people and, where possible, we will accommodate flexible working for all our roles.  

Similar jobs

Similar jobs