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Senior Trademark Paralegal

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Date: Apr 6, 2021

Location: Amsterdam, NL

Company: AkzoNobel

AkzoNobel has a passion for paint. We're experts in the proud craft of making paints and coatings, setting the standard in color and protection since 1792. Our world class portfolio of brands - including Dulux, International, Sikkens and Interpon - is trusted by customers around the globe. Headquartered in the Netherlands, we are active in over 150 countries and employ around 34,500 talented people who are passionate about delivering the high-performance products and services our customers expect.

Job Purpose

 

The senior trademark paralegal works closely with IP Counsels to handle all aspects of trademark, domain name and IP agreement matters.  The senior trademark paralegal works on multiple trademark legal matters under the supervision and closely with licensed trademark attorneys. The senior trademark paralegal is expected to partly independently manage the Trademark portfolio under its responsibility, especially all deadlines related to that portfolio are his/her responsibility. The end responsibility for the portfolio lies with the IP Counsel. However, the senior trademark paralegal should act as co-owner of that portfolio and show a high level of autonomy and a proactive work-attitude in its day to day work. The Senior trademark paralegal does not provide legal advice.
 

Key Accountabilities and Activities

 

  • Monitor and evaluate trademark watch notices, report to business and respond to agents;
  • Conduct preliminary clearance trademark searches;
  • Instruct agents to conduct full searches and use investigations;
  • Report preliminary and full clearance searches to businesses;
  • Prepare trademark and domain name filing proposals, report to businesses to obtain approval to act;
  • Instruct formalities officers to file trademark and domain name applications;
  • Independently prepare responses to non-complex office actions to file at the EU IPO, Benelux Trademark office (for attorneys sign off) and instruct agents to respond to office actions;
  • Report trademark refusals and registrations to business; 
  • Report classification issues to IP Counsel or business;
  • Prepare overviews for trademark renewals on an annual basis, conduct the review and after discussion with the IP Counsel send the renewal proposals to the business;
  • Prepare assignment plans, deeds of assignment;
  • Arrange for assignments and licenses to be recorded;
  • Prepare schedules of IP agreements; 
  • Support IP counsels with the preparation of agreements, including co-existence, prior rights, consent, license, trademark use declarations and confidentiality agreements, distributor license agreements, intragroup IP license agreements, co-existence agreements and letters of consent (for attorney sign off);
  • For oppositions, check prior rights and genuine use, request approval from business to file oppositions, prepare opposition files, prepare Benelux or EU oppositions and file after review by attorney, instruct agents to file oppositions at foreign IP offices (after discussion with IP Counsel), prepare supporting documents requested by agent, report outcomes to business;
  • For cancellation proceedings, instruct agent to conduct use investigations (after consultation with IP Counsel), to file cancellation action, prepare supporting documents requested by agent, reporting outcomes to business;
  • For infringement and IP court proceedings, prepare supporting documents instructed by agent;
  • Prepare overview for trademark portfolio reviews, prepare filing proposals when further filings are needed, report outcome of portfolio reviews to formalities officers to update the IP matter management system;
  • Conduct information searches when business requests a new domain name;
  • Monitor and manage docketed deadlines.

Experience

 

  • Bachelor degree in Law or Business administration; 
  • 5+ years’ experience as a trademark paralegal;
  • Excellent knowledge of EUIPO and Benelux trademark law, and working knowledge of the national laws of other countries;
  • Familiar with specifics of (internal) trademark processes and procedural requirements of IP Offices worldwide);
  • Experience in conducting and analyzing preliminary and full trademark clearance searches; 
  • Proficiency in computerized docketing systems and MS Office;
  • Completed paralegal course, such as BBMM (Beroepsopleiding Benelux Merken- en Modellengemachtigde) paralegal  course;
  • Being able to transform complex data into clear and concise reports;
  • Excellent English communication skills with ability to write clearly and effectively when responding to office actions, and in communication with IP counsels and Business contacts;
  • Strong interpersonal skills; a team player able to establish and build partnerships at all levels; with a positive attitude and able to navigate a constant changing corporate landscape;
  • Able to stay focused under time-pressure and to multitask while keeping sight of the bigger picture;
  • Self-motivated; able to act independently and with confidence, with minimal supervision, knows when to consult and interact with IP Counsels and businesses.

 

Application details:

 

We welcome your online application, reference 9972. Please note that applications sent by mail will not be considered. If you have any question, please feel free to contact our Talent Resourcing Partner Jeroen Sevenstern phone +31 (0)6 51706499.

 

An employment screening may be part of the selection process.

 

Agency or sales calls are not appreciated

 

 

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, age or disability.

Requisition ID: 9972