Senior Brand Protection Formalities Paralegal

Location: 

Liverpool, GB

Department or practice area:  Technology, IP and Information

Taylor Wessing

 

Taylor Wessing is a global law firm that serves the world's most innovative people and businesses. Deeply embedded within our sectors, we work closely together with our clients to crack complex problems, enabling ideas and aspirations to thrive. Together we challenge expectation and create extraordinary results. By shaping the conversation in our sectors, we enable our clients to unlock growth, protect innovation and accelerate ambition. 

 

With 1000+ lawyers, 300+ partners, 29 offices and 17 jurisdictions we are looking to expand our Technology, IP and Information  team, with the addition of a Senior Brand Protection Formalities Paralegal.

 

Meet the team

 

Our 150-strong international Technology Intellectual Property and Information (TIPI) group is one of the most highly respected around the world. Due to the strength and depth of our expertise, Taylor Wessing has an outstanding reputation in the field of IP and IT.

 

The team advises global clients on a wide range of IP issues through the full lifecycle of a business, and across a large variety of matters – from trade marks and designs registration, high profile licensing arrangements, regulatory advice.  We also have a large separate patents team that represents clients in patent litigation and advises on patent transactions and other technology related matters.

 

Our international Brand Protection team operates within the TIPI group. It is not just one of the largest practices of its type, it is also among the top rated, with a major international filing practice that is strategically core to the firm. This, together with the variety of the brands we represent across all business sectors, means that we have outstanding experience in every area of trade mark and design law. By integrating all aspects of trade mark and design practice into one team, we provide a full IP service, advising not just on clearance, prosecution and portfolio management, but also anticipating and handling litigation. Advising clients ranging from those with extensive international portfolios to SMEs and start-ups, we have an excellent track record in successfully resolving high-profile and complex brand disputes throughout Europe, the Middle East and Asia.

 

The brand protection team consists of both fee earners and paralegals located in Liverpool and London.

 

Key responsibilities

 The main duties of the Senior Brand Protection Formalities Paralegal include:

  • Undertaking trade mark and design filing, prosecution and registry formalities tasks working directly with the associates/attorneys (located in London or Liverpool) and with the partners (located in London)
  • Responding to queries from fee earners and other team members regarding trade mark and designs formalities matters
  • Providing support, working alongside the brand protection PAs and paralegals, on the trade mark application and registration process for the TIPI  group, including preparing and making arrangements to get Powers of Attorney signed, notarised, apostilled etc, conducting basic trade mark searches, liaising with IPOs and
  • foreign associates, the timely entry and removal of items from our database, WebTMS, upon their completion and managing any necessary follow up
  • Completing and submitting registry forms for new trade mark and design applications, oppositions, assignments and other recordals
  • Liaising with foreign associates regarding new trade mark and design applications, assignments and other registry-related actions
  • Assisting with the handling of foreign associate invoices, including keeping records of estimates/quotes against which invoices are to be compared and making recommendations as regards approval of the invoice
  • Assisting clients with and helping to resolve basic invoicing queries relating to their trade mark and design portfolios

 

Additional responsibilities

 

  • Liaising directly with clients for reporting standard updates and handling basic portfolio-related client queries, including preparing supporting documents for regular client portfolio telephone calls/meetings, attending the call/meeting and preparing action lists for follow up
  • Assisting with the renewal of trade mark and design registrations worldwide (overflow support for the renewals sub-team)
  • Assisting with tracking all correspondence from IPOs and foreign associates including responses to office actions and maintaining the associated deadlines
  • Timely and accurate entering/removing/amending of data in WebTMS system, including suitable file notes
  • Assisting with checking and managing all deadlines for the TIPI group
  • Assisting with new file/matter opening
  • Preparing trade mark schedules (application and renewals)
  • Checking trade mark registration certificates and recordal certificates and preparing and sending updates to clients
  • Assisting with the invoicing of trade mark portfolio clients

 

Additional responsibilities continued

 

  • Monitoring TW deposit accounts with the UKIPO, WIPO and relating to EUIPO work, and working with the Trade Mark Executive and senior trade mark attorney team members to ensure the accounts are appropriate managed and maintained
  • Assisting with research to support pitches or presentations to clients
  • Assisting the Brand Protection Formalities Manager, in arranging and implementing the training of the brand protection formalities paralegals
  • Helping to on-board new members of the TIPI team that will be doing any trade mark work to explain the formalities team function
  • Supporting the Brand Protection Formalities Manager in overseeing quality assurance of all our formalities systems and team performance
  • Deputising for Brand Protection Formalities Manager during holiday, sickness and other absences
  • Being a "super user" to help handle internal or client queries on use of WebTMS, Righthub, Fovea and any other specialist trade mark IT tools we take on (not being legal research/know how tools)
  • Being one of the key team members to take a lead in preparing dummy data sites for pitches, taking part in pitches, in on-boarding of new client portfolios and in coordinating the data audit process and outreach to foreign associates for new portfolios

 

 

Benefits

 

Here are a select few benefits that Taylor Wessing offer; 

 

  • Hybrid working (Offering the opportunity to work remotely, while maintaining a social boundary by working from our award-winning offices for 3 days a week) 
  • Holiday (Our basic annual holiday entitlement starts at 25 days, with a further discretionary day of paid leave in December. You may also purchase up to five extra days each year (pro rata). 
  • Enhanced Maternity and Paternity leave (After one-year service, you are entitled to up to 26 weeks leave full pay if you or your partner give birth or adopt a child). 

 

Along with these there are many more benefits we offer, with the addition of a comprehensive flexible benefits package available. 

 

Our culture

 

Nurturing a diverse, inclusive culture allows all of our talent to flourish, sparks creativity and powers innovation.  We continue to build a team that exemplifies inclusivity and reflects the firm's core values: creative, excellence, integrity, responsible, respect and team.  We value and celebrate the differences in who we are, what we have experienced and how we think, so all candidates will be treated fairly regardless of age, caring responsibilities, disability, gender identity, marital status, neurodiversity, pregnancy, race, religion or belief, sex, sexual orientation and socio-economic background.

 

The way we work

 

At Taylor Wessing, we never settle for average. We're creative thinkers, problem solvers and continuous learners who excel at what we do and believe our best work is still ahead of us. We are a firm that's large enough for you to achieve your ambitions, but connected enough to be a true community.  

 

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