Senior Trade Mark / Formalities Lead

A&O Shearman is a new global industry-leading law firm, with 48 offices in 29 countries worldwide. Our fluency in English law, US law, and the laws of the world’s most dynamic markets, enables us to provide unmatched insight and seamless delivery to clients. We work on challenging and important deals and disputes that have the potential to shape the future.
 
We offer exceptional opportunities for our people; opportunities to work for the world’s leading businesses; to transform the status quo, and to deliver your best work,  helping you and your career to thrive, while delivering unparalleled outcomes for our clients.
 
Whether you're helping clients solve complex challenges, transforming the ways we manage our business, or ensuring the smooth-running of our operations, this is an environment where you can belong and excel. We provide first-rate training and development, we are committed to diversity, equity and inclusion and we provide support and ways of working that help you optimise your wellbeing.
 
What truly defines a career with us? We recruit the best and ask for the best of you. And together, we will redefine success.

Department purpose

As a firm A&O Shearman considers that trademarks and designs are crucial to protect the innovation and investment that goes into developing brands – which are significant company assets for today’s leading businesses. Our trade mark practice supports brand owners in developing, protecting and exploiting their brands on every level: from initial trade mark clearance and selection, to filing, managing complex international portfolios, enforcement and disputes and any transfer of IP rights.

The Brands Group’s recent work includes advising on some of the highest profile trade mark and design cases. This includes representing Samsung and Manchester United in the High Court, as well as representing The Coca-Cola Company before the EU’s General Court. The Brands Group also assists a range of leading brand owners, including Amazon, Standard Chartered Bank, James Bond, MGM, Gibson Guitars, Warner Bros and NBCUniversal.

For the right candidate, this is an opportunity to work with some of the world’s best-known brands on interesting and cutting-edge IP issues.  You will be part of a friendly team with plenty of professional support and the accompanying benefits that can be expected from a prestigious magic circle law firm. Regularly voted in the top employer lists, A&O Shearman fosters a collaborative work environment. With a reputation of being a fantastic employer, A&O Shearman offers extensive benefits to support wellbeing and training and development. These are just some of the many reasons why you really should consider joining us. Apply today and come along and find out more!

Role Purpose 

Our growing Brands practice requires a Senior Trade Mark Administrator or Formalities Lead to assist with the day-to-day management of the practice.  This role is aimed at individuals with considerable experience working as a trade mark paralegal or trade mark administrator, with a very keen eye for detail and strong organisational skills, and who are interested in working with international clients and world famous brands.

Responsibilities

• Supervising and training formalities team members. 
• Overseeing the management of the client portfolio databases (WebTMS and Anaqua). 
• Overseeing the review, processing, and filing of communications from trade mark offices.
• Docketing and monitoring deadlines in trade mark and design matters. 
• Coordinating and running deadlines meetings, and management of resulting action points.
• Renewal and maintenance of clients’ global trade mark and design portfolios. 
• Managing on-boarding of new client portfolios.
• Leading client training on use of case management database and acting as a point of contact for status enquiries.
• Recordal of assignments, licences, security interests, changes of name/address at the appropriate trade mark and design registries. 
• Preparing client communications relating to trade mark and design matters, such as filing confirmation, publication and registration notifications, and updates on deadlines in proceedings.
• Financial management tasks including the preparation of cost estimates and matter budgeting. 
• Quality control and work efficiency management of other administrators and paralegals in the team.
• Process design and improvement including through use of relevant technology.
• Assisting with day-to-day matters associated with running a trade mark and design practice.

Who we are looking for  

• Experience working as a trade mark paralegal or administrator.
• CITMA qualified or relevant experience in the trade mark and design field is desirable. 
• Very keen attention to detail.
• Strong organisation skills with the ability to manage multiple deadlines.
• Strong interpersonal skills.
• Experience managing and training other members of staff.
• Ability to work as part of a team, both within Belfast and remotely with colleagues from around the firm across a wide range of levels, responsibilities, and offices.