Trademark Legal

at  BGRP Srl

BGRP Srl, a Swiss company with a branch in Italy that registers, manages and monitors trademarks, especially for the BAX groupis seeking a Trademark Legal.
Bax Group is an international company active in the Fashion, Gaming, Virtual Reality and Real Estate sectors with related companies in Europe and North America. Whoever works with BAX gets the best of all worlds. Because with BAX you are right in the middle. The companies of BAX do everything from the idea to the products. BAX found, source, produce, create, program, structure, distribute and scale. Taking as its motto: WE ARE BAX. Already in the middle.
We are looking for a Trademark Legal Specialist to join our team. Reporting directly to the Client, the Trademark Legal will be responsible for managing trademark and brand matters, including preparing opposition materials, drafting formal letters, preparing trademark status and filing reports, managing official notifications, and drafting, preparing, and negotiations with contractual and counterparty parties up to and including license and distributing agreements.

REQUIREMENTS:

• Master`s degree and/or paralegal certificate
• At least 3/4+ years’ experience
• Experience conducting and analyzing trademark searches using online global databases
• Experience filing applications, renewals, and other documents with the EUIPO and Swiss Federal IPI
• Significant prior use of trademark portfolio management databases
• Proficiency with Windows-based software and Microsoft Word, Excel, Outlook and Teams required
  Job Type: Full-time
  Location: On Site, in BGRP SRL in Milano

Languages:

• English (Required)
• Italian (Required)
• German (nice to have)

Contratto di lavoro: Tempo pien

• Manage trademark-related deadlines and ensuring that deadlines are handled
• Manage an internal trademark database
• Generate and prepare trademark reports
• Conduct in-house trademark and design searches in our own and on WIPO and EUIPO Databases
• Prepare and file EUIPO, Swiss Federal IPI trademark, DPMA German Patent and Trade Mark Office, etc. applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other refilings
• Prepare and file international applications and extensions of international registrations with the World Intellectual Property Office (WIPO)
• File documents such as assignments and name changes with the EUIPO and other relevant IP Offices
• Communicate with other departments to collect information and instructions related to trademark searches and filings
• Monitoring and securing the BAX’s own brands (more than 60 in different continents) and leading any oppositions and negotiations in the international context
• Quality management and control of the correct use on all media of group-owned brands. Collaboration with the areas of communication, graphics, copywriting, design, etc.