Kimberly Donna Beder
Dee Why,Australia
Summary
Legal professional with strong background in legal support, equipped to handle variety of tasks in fast-paced environment. Known for effective team collaboration and adaptability, always focused on achieving results and meeting deadlines. Strong organisational skills and proactive approach to problem-solving make for reliable asset.
Overview
17
17
years of professional experience
Work History
Paralegal
AirTrunk Pty Ltd
03.2023 - Current
- Supporting the legal team (APAC and Japan) across a variety of contracts including construction, procurement, data centre operations, real estate property, general commercial contracts and confidentiality agreements
- Collating a legal know-how document that captures the processes of the legal team
- Provide legal team with document and transactional support
- Populating and preparing template contracts and liaising with counterparties
- Coordinating the internal approvals and execution process for contracts
- Monitoring and administering AirTrunk legal inboxes and providing legal responses to business queries
- Reviewing of various BAU contract terms and conditions
- Managing internal contract registers
Senior Trade Mark Paralegal
Bristows LLP
12.2013 - 10.2022
- Developing client relationships and preparing status reports
- Drafting trade mark specifications of goods and services according to client’s business interests
- Preparing and filing UK, EU and International Trade Mark Applications
- Preparing and filing UK and EU Registered Designs
- Reporting acceptance, publication and registration of trade mark applications and designs to clients
- Drafting responses to Office Actions issued by UKIPO and EUIPO
- Reviewing watch notices, investigating applicants and reporting to clients
- Conducting preliminary trade mark searches using a number of trade mark databases and research into earlier rights proprietors online
- Preparing supporting evidence and filing documentation of opposition, invalidity and revocation actions with the UKIPO and EUIPO
- Managing the transfer of new client trade mark portfolios and auditing the information provided by the previous incumbent
- Assisting with reviewing the current protection of the client’s portfolio and where to enhance protection – filing in the gaps, merging and claiming seniority
- Facilitating management of formalities team by setting up regular team meetings and liaising with department head on matters of importance
- Leading special team projects, including writing a standards of operation manual
Trade Mark Paralegal
Rouse Co & International
07.2011 - 12.2013
- Preparing and filing UK, EU and International Trade Mark Applications
- Preparing opposition, invalidity and revocation papers for worldwide matters and filing and supporting prosecution of such matters for UK and EU, including drafting of request for extensions of time
- Developing client relationships, preparing client update reports and updating client databases
- Direct liaison with external clients, associates, and official Trade Mark Offices by correspondence and telephone
- Drafting responses to clients, agents and official Trade Mark Offices
- Conducting some preliminary trade mark searches using a number of trade mark databases and research into earlier rights proprietors on the Internet
- Conducting research as requested by attorneys, including reviewing and obtaining details of earlier citations
- Providing assistance with Hearings and preparation of evidence as requested by attorneys
- Conducting domain name searches online and Internet searches into use of domain names
- Qualified as an ITMA Trade Mark Administrator
IP Paralegal
Arcadia Group Ltd
09.2008 - 07.2011
- Arcadia’s trade mark portfolio is extensive and covers over 70 countries worldwide
- Responsible for maintaining and administrating trade mark portfolio
- Managing the task of gathering data and evidence from other departments/brand for use in opposition proceedings and cases of infringement
- Assisting in risk analysis of emerging markets (instructing external law firm on trade mark availability searches, investigating 3rd parties and compliance with local laws)
- Reporting risk analysis to the business heads
- Manage communication between Arcadia and HMRC regarding the seizure of counterfeit goods
- Leading special trade mark projects
- Examples: Assessing and reporting gaps in Arcadia’s trade mark portfolio and developing a trade mark filing strategy, corporate history library, marketing & press library for each brand by country and verification of affidavits and discovery documents
- Managing the consolidation of trade mark portfolio with external law firm as part of cost savings initiative
- Tasks involved putting Internationals in place and making EU countries redundant if covered by EUTM registrations
- Providing trade mark advice and clearance to brands looking to develop a sub brand or range name
- Secondment with an external law firm included being exposed to trade mark filing procedures, reviewing trade mark search results, reviewing past case history and obtaining a brief overview of Inprotech
Legal Secretary and Executive Personal Assistant to Group General Counsel
Arcadia Group Ltd
07.2007 - 09.2008
- Extensive diary management
- Travel arrangements
- Completing and submitting personal expenses for Group General Counsel
- Project co-ordination / management between departments
- Turn around of various Company Contracts and Legal Documentation
- Raising purchase orders for legal invoices and following up on payments
- Responsible for gathering sales and product information from the brands relating to IP infringement claims
- Assisting with research on various IP infringement claims
- Managing all aspects of office function
Education
Trade Mark Administrator’s Course -
The Institute of Trade Mark Attorneys
01.2012
Skills
- Drafting Legal documents
- Strong written & verbal communication
- Detail orientated
- Proficient in MS office
- Legal research
- Contract review
- Workload management
- Project management
References
References upon request.
Systemsexperience
- Microsoft Office to advanced level (Word, Power Point, Outlook)
- Docusign
- Adobe Acrobat Professional
- Web TMS (trade mark management database)
- IManage (Legal document management system)
- Intapp
- Elite & DTE (Time recording systems)
- Marquesa (UK/EU search system)
- SAEGIS (online search database for Trade Mark Registers, other official Registry sites)
- Whois (and other) domain name search sites
- Lotus Notes to advanced level
- Working knowledge of JDE Accounting
- Very good knowledge of office machines and setups
- Working knowledge of Macromedia Fireworks & Dreamweaver
- Domain Control Panels
- FTP
- Internet Explorer
Timeline
Paralegal
AirTrunk Pty Ltd
03.2023 - Current
Senior Trade Mark Paralegal
Bristows LLP
12.2013 - 10.2022
Trade Mark Paralegal
Rouse Co & International
07.2011 - 12.2013
IP Paralegal
Arcadia Group Ltd
09.2008 - 07.2011
Legal Secretary and Executive Personal Assistant to Group General Counsel
Arcadia Group Ltd
07.2007 - 09.2008
Trade Mark Administrator’s Course -
The Institute of Trade Mark Attorneys
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