Trade Mark Paralegal (CITMA)

Put you formalities expertise at the heart of brand protection

Are you an experienced trade mark paralegal or formalities professional looking for a role where your specialist knowledge is valued? Join the IP & Media team at Freeths and help our clients protect and manage their brands in the UK and internationally.

We are particularly keen to hear from candidates who have worked in the trade mark formalities, records or portfolio management team of a law firm or patent and trade mark attorney practice. This is an opportunity to bring that experience into an integrated team of specialist solicitors and trade mark attorneys, with varied portfolio work and meaningful client contact.

We recognise that a rewarding specialist career should work alongside life outside work. We welcome applications for three, four or five days per week, with the working pattern agreed at appointment. Birmingham is our preferred base, but we would also welcome applications from candidates wishing to be based in Bristol.

About the team and the role

Our IP & Media team helps clients create, protect, maintain and enforce their intellectual property. Our trade mark and brand management practice combines UK and international filing and prosecution, portfolio management, renewals, watching services and dispute work.

You will play a key role in the day-to-day running of our trade mark portfolios. Working closely with our attorneys, solicitors and colleagues across the team, you will take ownership of allocated formalities tasks and help ensure that records are accurate, deadlines are managed and clients receive a responsive service. You will work within agreed procedures and delegated authority, with support and supervision available when needed.

What you will be doing

•    Preparing and submitting trade mark applications and routine registry forms, including UK filings and international applications; coordinating EU and other overseas filings with our attorneys and overseas agents as appropriate.

•    Maintaining accurate portfolio records, updating our IP management systems and preparing clear status reports and trade mark schedules.

•    Docketing, checking and monitoring deadlines, chasing instructions and escalating outstanding actions or risks promptly.

•    Processing official correspondence and shared inbox communications, identifying required actions and preparing routine client reports for review where appropriate.

•    Handling renewals and post-registration formalities, including assignments, changes of name or address and other recordals, in line with instructions.

•    Liaising with clients, overseas agents and service providers to obtain information, documents, fee estimates and filing instructions.

•    Assisting with trade mark searches and watching services, collating results and flagging matters for attorney review.

•    Supporting the procedural administration of oppositions, cancellations and other registry proceedings, including deadline tracking and document preparation.

•    Helping with cost estimates, billing and matter administration, and contributing ideas to improve processes and the quality of our portfolio data.

What we are looking for

Essential

•    Practical experience in trade mark formalities, administration or paralegal work, with the ability to demonstrate accurate handling of filings, records and deadlines.

•    A sound working knowledge of the trade mark lifecycle and UKIPO procedures, together with familiarity with international portfolio administration.

•    Excellent attention to detail and the ability to prioritise competing deadlines calmly and methodically.

•    Clear, professional written and verbal communication skills and a client-focused approach.

•    Confidence using IP management databases, document management systems and Microsoft Word, Excel and Outlook.

•    A proactive, collaborative approach, with the judgement to work independently within agreed parameters and recognise when to seek guidance.

Desirable

•    The CITMA Paralegal qualification. We will also consider experienced candidates working towards the qualification or with equivalent practical expertise.

•    Experience within an established law firm or patent and trade mark attorney firm's formalities team, ideally gained over two or more years.

•    Familiarity with WebTMS or a comparable IP management system, WIPO/Madrid System administration, EUIPO procedures and overseas agent coordination.

•    Experience of registered design formalities, portfolio transfers or registry proceedings.

A law degree is not required. We are interested in your practical expertise, reliability and enthusiasm for a specialist career in trade marks.

Why Freeths?

At Freeths, we value people who think differently, work collaboratively and care about delivering excellent results. We offer:

•    A choice of three, four or five working days per week, with salary pro rated to your agreed hours.

•    A specialist role with responsibility, direct client contact and varied UK and international portfolio work.

•    A friendly, inclusive and supportive working environment where your contribution is recognised.

•    Training, mentoring and opportunities to develop your expertise and build a long-term career.

•    A competitive salary and benefits package, with a genuine focus on wellbeing and work-life balance.

Become part of the team at Freeths.

View some of our recent highlights on our website here.

We welcome applications from people of all backgrounds and experiences. If you require any adjustments during the recruitment process, please let us know and we will be happy to support you.