Main purpose of the role:
To support the IP team on Hong Kong and China trade mark matters, and assist with international trade mark portfolio management
Main duties and responsibilities:
- Prepare and file documents for Hong Kong trade mark applications, registrations and related proceedings
- Maintain trade mark portfolios, including docketing, record updates and deadline monitoring
- Liaise with clients, overseas associates and trade mark offices
- Draft reports on office actions and assist with responses and submissions
- Conduct trade mark clearance searches and prepare search reports
- Conduct trade mark, company and online research
- Support trade mark prosecution, portfolio management and related projects across multiple jurisdictions
- Assist with investigations into potential trade mark infringements and preparation of cease-and-desist letters
- Prepare fee estimates, portfolio summaries and status reports
- Undertake other duties as assigned by fee earners
Person Specifications:
Education / Qualifications / Experience:
- Post-secondary education; diploma or degree preferred
- 3 to 4 years of trade mark experience
- Experience handling national trade mark and Madrid Protocol matters
- Exposure to regional or international trade mark portfolio management
- Knowledge of registered designs and patent formalities is an advantage
- Excellent written and spoken English and Cantonese and/or Mandarin
Knowledge and Technical Skills:
- Good understanding of trade mark prosecution and portfolio management
- Familiarity with Hong Kong and regional trade mark practice and WIPO Madrid System procedures
- Strong drafting, research and communication skills
- Strong analytical and problem-solving abilities
- Proficient in Microsoft Office and legal technology platforms; familiarity with AI tools is an advantage
- Strong attention to detail and accuracy
General Skills:
- Ability to work independently and meet deadlines
- Strong organisational and prioritisation skills
- Team-oriented with a collaborative approach
- Strong client-service and interpersonal skills
- Adaptable, reliable and proactive
- Detail-oriented with good judgement and professionalism