Back to school for WebTMS! Retaking the CITMA Trade Mark Paralegal Qualification


Back to school for WebTMS! Retaking the CITMA Trade Mark Paralegal Qualification

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As autumn rolls around, the kids in the WebTMS families are not the only ones heading back to the classroom. Our very own Nick March is taking the plunge too!

Nick has been a core part of the WebTMS team since joining the company in 2013. But before he took on the challenge of legal technology, he was a trade mark paralegal and one of the early candidates on the (then) Institute of Trade Mark Attorneys’ Administrator course. Nick gained his qualification in 2004-5, long before the organisation was awarded its Royal Charter.

Lately, some more recent graduates of the CITMA Paralegal course have joined WebTMS, applying their in-depth industry knowledge to solving problems and helping clients get the best out of WebTMS. But it goes without saying that 20 years is a long time in both trade marks and technology, so Nick has decided to go back to school – fully supported by WebTMS – to take the CITMA Trade Mark Paralegal qualification.

In a blog mini-series, we’ll keep up with Nick’s progress and find out how things have changed.

What inspired you to take the plunge and head back to the classroom?

There were several factors. I recognised that in an industry as fast-paced and changeable as intellectual property there is definitely a risk of getting a bit rusty and I was concerned I might be losing touch with my core market. Taking the qualification is a great way to update my skills and gain in-depth knowledge about the current shape of the industry and the challenges faced by our customers, many of whom are trade mark paralegals.

There is undoubtedly a “challenge” factor too. It is always good to keep a growth mindset and embrace opportunities to learn – especially when it is related to your career.

How has the trade mark paralegal career path changed since you first took the qualification?

There’s no doubt that being a Chartered Trade Mark Paralegal is a great achievement to have under your belt. It is well recognised and respected in the industry and can really help get your foot on the ladder for a career in trade marks.

That career path can see you solely focused on TM Administration and TM Paralegal duties, but it can also be the stepping stone for a career as a trade mark attorney. This is something that has changed enormously since I was a young trade mark administrator as in those days the two roles were very much separate. It was extremely uncommon for TM administrators to progress their career and become a trade mark attorney, let alone even be considered for the role. This attitude has massively changed in the last 10+ years and I’ve seen many colleagues and friends take this route now. One of the factors in this shift is the overhaul of the CITMA trade mark attorney qualifications and the opening of different routes to obtaining the qualification.

There are also other paths you can take on achieving the CITMA paralegal qualification i.e. join a Specialist IP Software provider like WebTMS! This is a path I chose 10 years ago and one that more recently my colleagues Samantha and Viviene have decided to embark on.

What are the main differences you’ve noted so far?

When I previously undertook the course, formerly called the ITMA Trade Mark Administrator Course, it was all in-person meetings that would take place every Thursday evening. These were usually in an official building around the legal and IP part of London that was/is Chancery Lane, Holborn area, not far from the UK Patent Offices’ former UK location.  So, I had to leave the office slightly early to attend typically one lecture at a time with all the other students. Sometimes there would be a few of us breaking off to go to the pub after (or even before!).

At the point of writing, all my lectures so far have been either virtual and in real-time or virtual in the form of a pre-recorded video. However, on booking the course I took the option to also attend a maximum of three on-site lectures taking place in London, the first one being 4th October and taking place at the offices of Pinsent Masons. I’m really looking forward to this so I can meet the other students as well as some familiar faces such as clients and friends (not mutually exclusive) that I have made during my 20-year career span in IP.

In terms of learning support, there is now the excellent student hub portal on the CITMA website that holds all the presentations and handouts. This is an amazing resource, one that would not have been utilised so much (by anyone) back in 2005, where we relied on the lecturer giving us handouts or – if you were lucky – they would pop it on a USB stick!

Another difference is the creation of virtual study groups. All students have been randomly assigned into a smaller group of five or six students so you can get together, share thoughts, notes, and help each other. Not everyone coming into this qualification has years of practical knowledge so I think this is another bonus, and I’d like to think I can help my study group out should they ask.

What will be the most difficult aspect of the course for you?

It is probably the same as for the other students; we’re all busy and mostly in full-time work so it’s finding the time to attend the lectures as they happen. There is always the opportunity to watch them on ‘catch-up’ via the student hub, but I always prefer to attend in real-time wherever possible for the social interaction around the occasion.

Then there’s the exam. Whilst I’m fairly confident of passing it would be unusual if I wasn’t feeling a few pre-exam nerves!

Why do you think it is important that the WebTMS team has good qualifications in the industry – what value does it add?

For both the sales and training teams here at WebTMS it provides totally useful and practical insight into our clients’ world. For example, if you’re working with me in the Sales team and you understand the lifecycle of a trade mark, opposition procedures, what an assignment and a License are (to name a few areas), then you’re going to be speaking the language of the potential customer. You’re truly going to understand what details are necessary in what situation and how to overcome any pain points they have with creating, updating, organising, and reporting upon their portfolio of IP rights and deadline dates. It means you can support them to get the most use and value from the platform.

Likewise, for the support team, it really helps to understand why the client is trying to achieve something in the platform, having that background knowledge helps put yourself in their shoes so you can understand the issue at a deeper level and provide a sensible solution that the client will be happy with.

About the CITMA Paralegal course

The CITMA paralegal course is the official qualification for trade mark paralegals and support staff with suitable experience. CITMA says the course, “covers the legal aspects related to a paralegal role, as well as their often crucial tasks in handling formalities and the administration of trade mark portfolios.”

It comprises a series of lectures, with virtual and in-person options, followed by an examination based on the course content with both written answer and multiple choice sections. Successful candidates become eligible to apply for CITMA Paralegal membership.

Nick will keep us updated on his progress as he continues with the course. If you have any tips to help him study, or any memories of taking the course yourself, do share them with us.