4 months ago
Department Brands, Intellectual Property Group
Two Year Fixed Term Contract
Reporting to Partner
Closing Date 30 August 2019
Founded by Victor Mishcon in a one-room office in Brixton in 1937 we now have offices in London and New York, employing more than 900 people, with over 550 lawyers offering a wide range of legal services to companies and individuals. In every area of the law that we operate, Mishcon de Reya LLP prides itself in providing a best in class service to its clients. Specifically we offer the following legal services: corporate; dispute resolution; employment; family; private client; and real estate. An entrepreneurial spirit - where candour and involvement are key - characterises our ability to develop and execute the strategies required to achieve our clients’ goals in all these areas. We are an independent firm with an international footprint that extends far beyond our offices in London and New York.
The IP Group
We are one of the largest IP practices in the UK with more than 40 lawyers and trade mark attorneys, and advise the owners of some of the world's most famous IP rights. We work across a range of sectors including technology, automotive, pharma, betting & gaming, sport, retail, fashion, media and hospitality. Our IP Group comprises five teams: Brands, IP Disputes, Commercial/Data Protection, Patents/Life Sciences and Sport.
The Brands Team
We work with our clients throughout the full life cycle of their brands, from creation through to protection and enforcement. We add value to businesses by playing a strategic advisory role – finding the right legal strategy to best support commercial strategy. Our team is ranked in Tier One for Brand Management by Legal 500 and won TMT Firm (Specialism) of the Year in Brand Management at The Legal 500 UK Awards 2017. We were also instrumental in the Firm's award of Global Luxury Law Firm of the Year 2019 at the Luxury Law Summit. Renowned for innovation in developing new services and products that provide a return on investment for our clients, we have recently launched MDR Brand Management, the first brand management business launched by a leading firm in the UK.
This is a fantastic opportunity for someone looking to develop their career as a Trainee Trade Mark Attorney within a law firm, and will suit a candidate looking to grow their trade mark experience and who is likely to be an experienced trade mark paralegal. There is potential for the Firm to provide assistance to meet the required academic study course fees.
This is a rare opportunity for someone to gain experience with direct client contact so excellent interpersonal skills, as well as accurate written and verbal English language skills, are essential.
Duties and Responsibilities include:
* Support the management of national and international trade mark portfolios for emerging and established brands giving pro-active and timely advice, ensuring deadlines and meeting performance are met
* Oversee preparation of estimates for pre-filing searches and TM/Design filings.
* Co-ordinate searching, filings, renewals and disputes globally via the firm's network of international associates
* Provide search and clearance advice to use and/or register new marks at the UK and EUIPO levels
* Advise on, prepare and file UK and EU TM/Design applications.
* Advise in relation to registry objections, oppositions, revocations and associated settlement agreements
* Collate evidence of use, and evidence of registration in other jurisdictions.
* A minimum of 5 years' experience working within a trademark practice is essential, preferably within a law firm environment
* Candidates should have already studied for, be currently studying or be registered to begin a CITMA approved postgraduate certificate course in trade mark law or intellectual property law.
* Excellent understanding and strong knowledge of the trade mark application processes, and the ability to work without supervision
* Strong working knowledge of IPPO (webTMS) required.
* Experience of operating Web TMS d
* Knowledge of Saegis and Serion desirable.
* Solid experience of using EUIPO trademark search and darts IP
* Advanced Microsoft excel skills
* Excellent interpersonal/communication skills, with the ability to build strong relationships both externally and internally across the Firm.
* Ability to stay calm and work well under pressure.
* Ability to prioritise workload and demonstrate flexibility when required.
* Excellent attention to detail and diligent management of deadlines.
* Ability to work independently without supervision, as well as being able to work as part of a close team.
* Flexible and proactive approach with a ‘can-do’ attitude.
Please note that this job specification is not an exhaustive list of duties but merely an outline of the key components of the role. There may be additional responsibilities required as and when requested.
Diversity & Inclusion lie at the heart of our core values. At Mishcon de Reya, our aim is to promote and foster a culture which embraces diversity, respect for the individual and the expression of talent, to empower individuals to fulfil their, and the firm’s, potential. In order to support this, we recognise the importance of flexible and agile working and are open to having conversations on how this could work for you and our business.