A question of Choice - Solicitor and ‘Trade Mark Attorney’

Reviewing the recently published IPO booklet 'Choosing the Right IP Adviser' I noticed at page 7 the following paragraph about Trade Mark Attorneys:

No one in the United Kingdom may use the title 'Registered Trade Mark Agent' and 'Trade Mark Attorney' unless he or she is on the official list of qualified practitioners (the Register of Trade Mark Attorneys).

As far as I'm aware this is actually wrong. It is the word Registered Trade Mark Attorney that is reserved. A solicitor may refer to him or herself as a Trade Mark Attorney.

ITMA's Trade Mark

The right to use the term registered trade mark attorney derives from ITMA's trade mark (no 2442739). When ITMA applied to trade mark the term ‘Trade Mark Attorney’ the Law Society opposed the application. The matter was eventually settled between the two bodies on the basis that ITMA would limit the application in the following way:

This certification mark shall not prevent a person who is a solicitor, a firm of solicitors, or a body recognised under Section 9 of the Administration of Justice Act 1985 from using the term "Trade Mark Attorney".

Has anything happened to change this or is the IPO's booklet in need of amendment?

Solicitors wanting to become Registered Trade Mark Attorneys

I don't know what it would take under the new rules introduced by IP Reg for solicitors to become registered trade mark attorneys. While I would be happy to take some steps to become a registered trade mark attorney, it would not extend to sitting extensive exams. I don't see why I should given that I have extensive experience of registering trade marks, have specialised in IP law for many years, hold a post graduate qualification in IP law, read journals etc. Also I can call myself both a solicitor and trade mark attorney...

Unless I'm mistaken, when the Joint Examination Board was set up in 1990 by ITMA and CIPA – that is, before the new syllabuses were introduced - patent attorneys were automatically granted the title of trade mark attorney, without the need to pass any exams, so why not do the same for solicitors with appropriate experience now?

I just wish the Law Society had reached an agreement with ITMA for solicitors specialising in IP law to be able to become registered trade mark attorneys in a practical and painless way because it would cause less confusion for consumers. However, in the meantime, it would help if bodies like the IPO understood the fine distinctions and didn't put out wrong information to the public.

A question of choice

Choice of IP adviser can be hard, when from a distance
they all look the same to the paying customer

"Choosing the Right IP Adviser" is the title of this short piece by Mike Barlow OBE, once head of BP International's Global Patents and Technology Group but now running a sole IP consultancy, Fairoaks IP. Mike is one of the latest batch of IP experts to gain the benefit of exposure to a fresh readership of prospective clients from the UK Intellectual Property Office's IP Insight online magazine. Mike writes:

"November saw the publication of the IPO's latest offering in its 'Healthcheck' series. Entitled 'Choosing the Right IP Adviser (467Kb)', it sets out the options available and key questions to ask before commissioning IP services.  This booklet is designed to help you become an informed consumer of the IP Adviser services you require to obtain registered rights. It:

* contains an overview of the potential sources of IP services available (including certain sources of reliable free advice) [almost: it contains an overview of the potential sources of free advice but doesn't specify which are the reliable ones ...];
* suggests a number of questions you should ask before engaging your adviser;
* provides answers to a number of commonly asked specific questions;
* provides a list of useful contacts 

... The purpose of this booklet is not to recommend any particular adviser or indeed group of advisers but rather to help you become an informed consumer of the services you require to obtain registered rights.

... The booklet begins with an overview of the potential sources of IP services available (including certain sources of reliable free advice) and then suggests a number of questions you should ask yourself before engaging your adviser. At the end, answers to a number of commonly asked specific questions are provided.

Finally before beginning the process of choosing an adviser it is well worthwhile getting at least a basic knowledge of the various IP Rights which are available (patents, copyright, design rights, trade marks) and the requirements for getting them.... 

"Those new to IP often find it difficult to get the advice they really need and it is all too easy to end up with little to show for your money. This new publication draws on the experience of experts to provide a roadmap for small businesses to find and get the best out of their advisers".

Readers of the SOLO IP blog may wish to take a look at this short guide and provide their own glosses on it when providing preliminary information of their own for prospective or even current clients.  Here's a bit which readers may resonate with:

"You should try and choose an adviser with whom you can empathise and communicate [If only practitioners could choose clients on the same basis! Seriously, communication faults lie at the heart of so many poor practitioner/client relationships and it's an area in which many people both sides can improve their performance]. This will be a matter of personal taste because you are entering into what may well be a long and close business relationship. If at the outset you suspect difficulties then you probably need to choose someone else. Not everybody gets on with everyone else and there is a wide range of advisers available. Whoever you choose it will almost certainly involve a balance between personal empathy and professional competence – the two do not always go hand-in-hand. You also need to be happy that the adviser’s abilities and work patterns fit in with yours, particularly if working with an overseas adviser who may not be a native English speaker, may be in a different time zone, have different holiday periods [or, in the case of solo practitioners, no holiday periods ...], etc."

A temporary agency for IP professionals: prospects and problems?

Earlier this week I posted on the IPKat an item on IPHire, which describes itself as "a temporary agency for IP professionals, and here we are talking professionals at all levels - assistants up to senior advisors".  According to IPHire,

"When you are an employer, you should not only think parental or maternity leave, but also if you suddenly have a big project where you need extra help, but you know that the post will finish when the job is done, just look here". 

I added that. for anyone who is a job-seeker, a newly qualified candidate or just looking for a new challenge and maybe wants to have a European post on his or her CV, all they had to do was add their name to the database here.

While it's obvious that this service, or something like it, could be very useful for SOLO IP readers who run small practices.  If more work comes in than can be easily handled, or if sickness or holidays put unpredicted pressure on the diary, it could be useful to identify and recruit some extra support.  But when there isn't work coming in, and a practitioner has unproductive time on his or her hands, it could be a good way of filling in someone else's gaps.

What I'm curious to know is

• Is IPHire the only web-based service or are there others?
• Have any SOLO IP readers any personal experience of this or other services that might be valuable if shared with others?
• What problems and pitfalls should users bear in mind if offering or seeking services this way?