Senior Trade Mark Paralegal

This job is with Lewis Silkin LLP, an inclusive employer and a member of my Gwork – the largest global platform for the LGBTQ+ business community.

Please do not contact the recruiter directly.

About the Team

Our UK & EU leading intellectual property practice is unique in its IP360 offering, advising clients on the filing prosecution, opposition, transaction and litigation of all UK & EU intellectual property rights (both contentious and non-contentious, detailed below) across all technologies and across all sectors.

Our IP practice is truly international, advising clients around the globe.

We believe we are the go-to firm for household brands to deal with their full IP requirements.

We have dedicated litigation and commercial IP offerings, and are involved in some of the most high-profile cases in the top courts, including the High Court, Intellectual Property Enterprise Court, Court of Appeal, Supreme Court, CJEU, as well as the UK and EU Intellectual Property Offices

Our experts advise on the full range of intellectual property rights

• Patents – we are well versed in the prosecution and opposition of rights and are adept at managing global portfolios, advising on filing strategies and providing competitor analysis and watch services.
• Designs – protecting clients’ products, whether it is for its shape, materials, texture, colours or configuration by making full use of registered and unregistered design protection.
• Trade marks – protecting clients’ brands by managing portfolios globally, advising on efficient filing strategies, providing watching services and dealing with oppositions.
• Domain names – proactively managing the registration and protection of domains and domain portfolios and dealing with malicious attacks such as cybersquatting and phishing.
• Copyright, database and confidential information – assisting clients with the protection and exploitation of their creative works and software through the recording, management and protection of copyright (and related areas such as database and performance and moral rights) and confidential information.
• Transactional IP – advising on the development and commercialisation of intellectual property including audits, due diligence, market insights, freedom to operate opinions, research and collaboration agreements, franchise agreements, manufacturing agreements, product acquisitions, brand acquisitions and assignments and licences.
• Litigation – advising clients on managing global enforcement strategies across all rights, including anti-counterfeiting and infringement actions or validity proceedings.

We conduct litigation before the Intellectual Property Enterprise Court, High Court, Patents Court, Court of Appeal, Supreme Court, General Court and Court of Justice of the European Union.

About the Role

We are seeking a Senior Trade Mark Paralegal to join our Intellectual Property team.

This is a fantastic opportunity for an experienced trade mark professional to play a key role in helping clients protect and maximise the value of their brands across the UK and internationally.

Working closely with Trade Mark Attorneys, Solicitors, clients and overseas associates, you'll be involved in a diverse range of matters spanning portfolio management, brand protection, trade mark prosecution and contentious work.

We have one vacancy and welcome applications from candidates based in London, Belfast, Leeds or Manchester.

Your key responsibilities will include

• Managing UK, EU and international trade mark portfolios, ensuring deadlines, records and actions are maintained accurately and proactively.
• Preparing draft specifications and coordinating the information required to support trade mark filings across multiple jurisdictions.
• Coordinating UK, EU and international filing programmes, including the preparation and filing of applications, renewals, assignments, licences, ownership changes and other recordal matters.
• Assisting with examination report responses and managing post-filing requirements across a range of jurisdictions.
• Contributing to contentious matters, including oppositions, invalidations, revocations and enforcement activities, including the preparation of evidence and supporting documentation.
• Building effective relationships with clients, overseas associates and colleagues to ensure matters progress efficiently and a high standard of service is maintained.
• Undertaking legal, commercial and online research to support client work and wider projects.
• Supporting trade mark and wider intellectual property due diligence exercises, portfolio reviews and audit projects.
• Producing portfolio reports, status updates and other client-facing materials.
• Maintaining accurate records within the firm's trade mark and document management systems, while identifying opportunities to improve processes and ways of working.
• Working collaboratively with colleagues across the wider IP team to meet client deadlines and deliver a seamless service.
• Contributing positively to a supportive, inclusive and high-performing team culture.

You'll join a collaborative and highly regarded team, with the opportunity to further develop your expertise while working on complex and varied trade mark matters for a diverse client base.

About You

Our ideal candidate will be able to demonstrate

• A minimum of five years' experience in a Trade Mark Paralegal, Senior Trade Mark Paralegal or similar portfolio management role.
• Strong technical knowledge of trade mark prosecution, portfolio management and brand protection across the UK, EU and international markets.
• Proven capability in managing filings, renewals, ownership changes, clearance searches and ongoing portfolio maintenance.
• Exposure to contentious matters, including oppositions, invalidations and revocations, would be advantageous.
• Strong drafting, analytical and communication skills, with the ability to build effective relationships with clients, colleagues and external contacts.
• Excellent organisational skills, with the ability to manage competing priorities and deadlines across a varied workload.
• A proactive and commercially minded approach, with the confidence to take ownership of work and deliver a high standard of client service.
• A collaborative mindset and a positive contribution to an inclusive and supportive team environment.
• CITMA qualification, or an interest in working towards one, would be beneficial.
• Familiarity with trade mark portfolio management systems, such as Anaqua, and search platforms such as Fovea, would be advantageous.
• Confidence using Microsoft Office and other business systems, together with a willingness to embrace new technologies and ways of working.

Additional Information

At Lewis Silkin our ethos is simple.

We strive to do the best for our clients, our people and the communities in which we operate.

We recognise that an inclusive workplace allows for all kinds of ideas and thoughts, a variety of points of view that can trigger discussions or deliver innovative results, and a wide range of versatile skills and expertise.

We are proud of the diversity within Lewis Silkin and of our culture that allows people to be themselves at work, ensuring we provide the best possible service to our clients.

We are committed to supporting candidates throughout the recruitment process by supporting anyone who requires adjustments, in order to ensure they have the opportunity to perform at their best.

All applicants will be considered equally and fairly.

If you’d like to request any adjustments throughout the recruitment process, or would like to discuss flexible working patterns, please email the recruitment team in confidence ( recruitment@lewissilkin. com ).