Paralegal, Trademarks

Req #: 1801030
Location: Birmingham, England UK
Other Locations:
Job Category: Legal
Job Description

What makes working at Mondelēz International so special? Many things. The iconic brands and global nature of our business. The continuous innovation and endless opportunities to grow. The chance, each and every day, to put a smile on people’s faces. We’re the world’s leading maker of Chocolate, Biscuits, Candy and Gum with billion-dollar brands like Cadbury, Milka, Prince and Oreo and we now have an exciting opportunity to join our team.


The role of Paralegal, IP Operations will be responsible for providing a broad range of trademark advisory and support services for one of Mondelez Regions, including the management of searches & filings, prosecution and oppositions for the trademark portfolios in that Region. 


The role will report to Trademark Counsel.  In addition,  this position will provide support to the Global IP Team in the delivery of the new Global IP Strategy by the participation in cross-functional project teams within the IP department. 


Key Responsibilities:

• Supporting the Trademark Counsel and the Trademark Team in the provision of trademark advisory services for one of the Mondelez Regions, including the management of searches & filings, prosecution and oppositions for the trademark portfolios in that Region.
• Instruction and management of identical and full trademark searches for regional and cross-regional innovation projects, analysis and collation of results for reporting to Mondelez BU stakeholders
• Instruction and management of trademark filing and prosecution for all innovation within the relevant Mondelez Region, including where relevant use of International and other TM filings protocols to drive efficiencies


• Instruction and management of trademark oppositions in the region, including liaising with Mondelez BU stakeholders on opposition strategy and process and management of external agents
• Management of Trademark watching service for Mondelez Region – review and analysis of watch results, take action through opposition where necessary


• Maintain and update WebTMS database of Global TM Dept, and LDMS filing systems on all search, filing and opposition matters in the region
• Support the management and development of good working relationships with the Mondelez Preferred Agent network in the region


• Support the Trademark Counsel and the Trademark Team in the fostering and building of positive working relationships with internal Mondelez stakeholders within the legal and commercial functions in the relevant region including the participation in training sessions and updates on Trademark protection and enforcement
• Participation in cross-function project groups within the Global Intellectual Property Team to support the delivery of the Global IP Strategy and the Goals of the Global IP Team
• Staying up to date on developments in trademark practice and procedure in countries in the relevant region


Key Requirements:

• University degree (or equivalent) preferred.
• Prior experience as a specialist paralegal or legal administrator either in-house or a major law firm with expertise in international trademark practice.
• Excellent team player with exemplary interpersonal skills.


• Superior analytical, oral and written communication skills.
• Exemplary planning and organizational skills.


• Excellent experience of using Microsoft Software, Databases and preferably bespoke Document Management Systems
• Ability to work confidently within a matrix organization and to work well under pressure.
• Efficient, confident, pro-active, attentive to detail, reliable, service-oriented, self-starting, with impeccable integrity and willingness to learn.


Continued increase in search/filing efficiencies and reduction of overall TM spend in region over annual cycle
Increased TM protection for power brands, regional brands for Mondelez Region




We pride ourselves on having a high performing and collaborative culture where we offer support and development to enhance your career and develop your knowledge and skills.

In return for your commitment, drive and enthusiasm, we offer an attractive benefits package within a highly successful International business that offers financial rewards and resources, including bonus scheme, contributory pension, life assurance, generous holiday allowance and a flexible benefits programme.