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Trademark Executive

Location :

Vietnam

Department :

Legal

POSITION SUMMARY

Your title will be Trademark Executive. You will report directly to and receive instructions from the Head of Trademark – Vietnam, the Firm’s Director, and/or other Partners.

Substantive Legal Responsibilities 

  • Provide timely advice and respond to client inquiries on trademark matters, including procedures, estimated costs, searches, review and proposal of specifications of goods/services, prosecution, disputes, enforcement, post-registration matters, and related issues.
  • Meet with clients, in person or via online video conference, to discuss their cases and maintain client satisfaction.
  • Conduct trademark searches and assessments, and advise on registrability, including options to overcome detected marks and filing strategies.
  • Prepare, review, and file trademark-related documents and submissions, including applications, responses, oppositions, cancellations/invalidations, appeals, renewals, recordals, and related matters.
  • Manage trademark portfolios and proceedings, including filings, prosecution, office actions, oppositions, post-registration matters, deadlines, status reporting, and recommendations for overcoming objections and refusals.
  • Remain updated on IP laws and amendments in Vietnam and worldwide. Maintain your IP license (if any) with the IP Office.
  • Other substantive legal responsibilities as determined by the Firm’s management from time to time.

Administrative and Marketing Responsibilities 

  • Promptly record and maintain accurate daily time logs in accordance with the Firm’s policy, and ensure all timesheets are entered into the Firm’s timekeeping program by the close of business on the following working day.
  • Ensure all telephone calls, photocopies, and reimbursable expenses, including Payment Voucher forms, are promptly recorded and processed in accordance with the Firm’s procedures.
  • As instructed, (i) review, correct, approve, and process client invoices in accordance with the Firm’s billing policies; (ii) promptly inform the accounting department and filing staff when a file should be closed; and (iii) monitor accounts receivable and follow up with clients to ensure timely payment of invoices.
  • Ensure compliance with the Firm’s new matter procedures, including (i) conflict checks, fee agreements, deposits before commencement of substantive work, and (iii) support staff open new client files, obtain billing numbers, and complete the New Client Record forms immediately after the Firm is retained by a client.
  • Ensure all client communications and file records are promptly organized and maintained, including written summaries of the contents of all your telephone, Teams/Zoom, text, and face-to-face conversations with clients or other third parties, so that client files remain current and complete.
  • Develop, implement, and periodically update a personal marketing plan in coordination with other members of the Firm and its management, including articles, newsletters, conferences, and other marketing activities as required.
  • Assist all members of the Firm’s management and other personnel to assess, manage, mentor, and supervise the Firm’s associates and trademark support staff, as necessary, including reporting any performance problems promptly to the Head of Trademark or the Director, and for conducting periodic performance reviews, as requested.
  • Submit periodic written reports to the Head of Trademark and the Director, and attend team meetings, as and when requested.
  • Other administrative and marketing responsibilities as determined by the Firm’s management from time to time.

Qualifications: 

  • At least 5 years of substantive experience in trademark law
  • Demonstrated experience prosecuting trademark applications before the IP Office
  • Experience with international trademark filings (Madrid Protocol, EUIPO, and foreign jurisdictions)
  • Strong familiarity with trademark databases and research tools
  • Experience with docketing systems
  • Law degree
  • Bar admission/IP agent license is an advantage

Soft Skills & Attributes 

  • Excellent written and verbal communication skills, with the ability to clearly explain complex legal concepts to clients.
  • Strong client relationship management skills and a proactive, service-oriented approach
  • Meticulous attention to detail, particularly when managing multiple matters and deadlines
  • Ability to prioritize and manage multiple matters in a fast-paced environment without sacrificing quality
  • A collaborative mindset and genuine enthusiasm for mentoring and knowledge-sharing within the team
  • Sound judgment and the ability to provide practical, business-minded legal advice

 Please send the CV to:  [email protected]

Ready to join us?

Please submit CV & all related documents to [email protected]