THE TEAM

Our IP Disputes and Trade Marks team in London is led by Chambers rated Arty Rajendra. The team also comprises 8 further Partners, 12 Senior Associates/Associates, 4 Paralegals (inclusive of this role), a Formalities Assistant and 2 Trainee Solicitors.

TECHNICAL SKILLS AND EXPERIENCE

You will have experience in trade mark paralegal, 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 IT, written and verbal communication skills, organisation and time management are also essential.
The CITMA paralegal qualification is also highly desirable.

ABOUT US

Osborne Clarke is an international legal practice with over 330 Partners and more than 1,260 talented lawyers in 26 locations*. Our sector-based approach enables us to help our clients tackle the issues they are facing today, and prepare for the ones that they will face tomorrow. Advising them both comprehensively and commercially. We love working closely with our clients on new deals, products and solutions which will transform their businesses, markets and even sectors. And our unique approachable culture is not an added extra, it’s fundamental to our success.

At Osborne Clarke we value difference and encourage applicants from all backgrounds. We want everyone to feel that OC is a place where you can be yourself and belong, and our range of interest groups and diversity networks - not to mention our great teams - are a part of making that a reality. We value the health and wellbeing of our people and our wide range of initiatives and benefits support this.

• Services in India are provided by a relationship firm

ROLE PROFILE

We have an exciting opportunity for a Trade Mark Paralegal/Formalities Assistant to join our IP team in London on a 12 Month Fixed Term Contract.
Our client base includes many leading retail, 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 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.
The team also handles 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 are also an acknowledged leader in growth areas such as digital transformation, AI, online broadcasting and gaming.

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 managing client portfolios using WebTMS
• Preparing detailed costs estimates
• 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