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Trade Mark Formalities Assistant

Simmons & Simmons

London

On-site

GBP 30,000 - 50,000

Full time

7 days ago
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Job summary

An established industry player is looking for a motivated Trade Mark Formalities Assistant to join their dynamic Brands and Trademarks Team. In this role, you will support the filing of Trade Mark applications and manage databases, ensuring accuracy and efficiency. You'll work closely with partners and associates, providing valuable information to clients and trademark offices worldwide. This position offers a diverse workload and the chance to grow within a leading IP practice known for its commitment to innovation and inclusion. If you're proactive and detail-oriented, this opportunity could be the perfect fit for you.

Benefits

Flexible working options
Commitment to diversity and inclusion
Opportunities for growth and innovation

Qualifications

  • Experience in managing Trade Mark databases and filing applications.
  • Strong organisational and communication skills are essential.

Responsibilities

  • Manage in-house Trade Marks Database and client databases.
  • File Trade Mark Applications and maintain accurate records.
  • Liaise with clients and overseas agents for task turnaround.

Skills

Trade Mark paralegal/administrator experience
Knowledge of OHIM/UKIPO & WIPO websites
Organisational skills
Attention to detail
Communication skills

Education

Degree or equivalent

Tools

CPI Database
Anaqua
Saegis

Job description

Join to apply for the Trade Mark Formalities Assistant role at Simmons & Simmons

Our Intellectual Property (IP) Group has been at the forefront of IP law and practice for more than 35 years and has consistently been involved in many of the leading IP cases and transactions. We have over 70 lawyers in Europe, Asia, and the Middle East. Simmons & Simmons is one of the most highly regarded IP practices, advising on all aspects of contentious and non-contentious IP.

We have industry expertise and focus, particularly in life sciences, TMT, consumer goods, financial institutions, transport, and energy. We are highly experienced in managing multi-jurisdictional litigation, strategy, and negotiations.

We are seeking a motivated individual to support the work undertaken by the Brands and Trademarks Team, including filing, renewals, and records. You will enjoy a varied workload, working alongside another trademark formalities assistant, supporting partners and associates in the UK and internationally by providing information to clients, trademark offices, or agencies worldwide. You will also be responsible for maintaining our relevant databases accurately.

Main duties and responsibilities
  1. Managing our in-house Trade Marks Database (CPI) as well as our client’s database (Anaqua);
  2. Filing Design & Trade Mark Applications to the UKIPO, OHIM, and WIPO and instructing agents worldwide;
  3. Filing contentious instructions to UKIPO, OHIM & WIPO;
  4. Reporting filing details, acceptance, and publication to clients;
  5. Attending to post and electronic communication via UKIPO, OHIM & WIPO;
  6. Arranging records of UK & Overseas Assignments / Changes of Name and Address;
  7. Attending to UK, OHIM, WIPO & Overseas Renewals;
  8. Processing registration / renewal / assignment certificates;
  9. Liaising with clients, overseas agents & trade mark attorneys to oversee turnaround of tasks;
  10. Providing regular schedules and status reports to clients;
  11. Setting up and monitoring watch notices;
  12. Responsible for maintenance of UK IPO, WIPO, and OHIM debit accounts;
  13. Creating new files and managing file archive and retrieval systems;
  14. Processing of invoices and billing guides;
  15. Providing simple trade mark searches in UK / Overseas & in-house via Saegis;
Person specification
  1. Previous Trade Mark paralegal/administrator experience;
  2. Good working knowledge of OHIM/UKIPO & WIPO websites and forms;
  3. Educated to degree level or equivalent;
  4. Strong organisational skills;
  5. Good attention to detail;
  6. Good oral and written communication skills;
  7. A proactive attitude with the ability to take initiative and forward plan;
  8. Able to work effectively as part of a diverse and inclusive team;
  9. Able to manage competing demands and work well under pressure;

Our culture is built on work that matters, offering opportunities for growth, innovation, and inclusion. We provide a competitive package, flexible working options, and a commitment to diversity and inclusion. For more information or to apply, please contact our Recruitment Team or visit our career page.

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