Wednesday 26 February 2014

Disclosure: the risk of the Unqualified and Partially Qualified

Our good friend and trade mark attorney Aaron Wood (now with Swindell & Pearson Ltd but no stranger to solo practice) writes:
The market for trade mark prosecution services in the UK is diverse. On the one hand we have the corporate monoliths, on the other the collection of SMEs that make up the trade mark and patent profession. Somewhere outside these, biting at the bottom (and increasingly the middle) of the market are those companies that operate online and offer to register marks and/or to search the availability of marks. Often staffed by non-professionals, they undercut the services provided by qualified lawyers and often pick up the most cost-conscious clients. While the levels of service and advice may not reach the heights of IP professionals, for many clients they are deemed sufficient.

It recently struck me that these businesses all suffer from the same issue, however. One key aspect of practice that UK-qualified lawyers take for granted is legal professional privilege – the ability to tell the client that the mark they have just filed is of questionable validity at best, or that the other marks located by a search are a clear infringement risk, without the risk that this advice will be disclosed in subsequent litigation. It is a central plank of practice that allows a client to disclose all to their advisers. It is a privilege which is not extended to part-qualified attorneys unless suitably supervised, however, and is certainly not extended to unqualified service providers.

Most of the time it is not a problem, but using non-lawyers for IP work means that the advice given on availability or registrability is open to disclosure in any proceedings. One can imagine the result of a claimant seeking disclosure of the search advice, and the defendant having to disclose that they were advised that the proposed mark would infringe. It is also worth noting that marketing agencies (who regularly undertake clearance searches) would also be caught by this risk and that in-house departments that use unqualified paralegals without sufficient supervision from qualified lawyers may also be caught.

For foreign associates and in-house attorneys, it may be worth considering whether the adviser you instruct is suitably qualified or supervised. The UK market has a lot of titles and it can be confusing – there is a world of difference between a Registered Trade Mark Attorney and someone who is simply a European Trade Mark Attorney; ditto a barrister and a barrister (non-practising). Advice from the former in each of these pairs would be covered by legal professional privilege (in the first case, so long as it is in the specialised area) as communications between a client and lawyer; in the latter case, no legal professional privilege accrues and you would need to disclose any non-contentious advice you received (the UK providing that legal advice obtained in relation to actual or contemplated litigation is covered by litigation privilege).
As ever, readers' comments and experiences are appreciated, whether from the UK or beyond, on this important issue. Thanks, Aaron, for sharing your thoughts.


  1. In relation to the UK, it is perhaps worth noting that advice from a Registered Patent Attorney or European Patent Attorney is covered by privilege, and this extends to advice on trade mark (and design) matters too.

  2. What is important to any client is to know that he is getting competent advice and qualification checks are a good way of doing that, but personal recommendation is likely better.
    The concern about protection of privilege when doing non-contentious work is somewhat exaggerated. In UK litigation especially at IPEC disclosure is not common. However Deputy Judge Alastair Wilson QC did order the provision of further information on search terms used in respect of a search carried out by a client personally in one case.

    Privilege and the idea of without prejudice seem to be completely alien to practitioners before OHIM and in the case of settlement of those, I tend to treat everything as potentially open, not that it is likely that the opposition division would ever read any of my observations (other than substantiation of an earlier right proof of use) let alone those about submissions made by the other party.

  3. "Deemed sufficient" is where it's at ! I spend a lot of time with "did it myself" people and what they don't appreciate is that there are three sets of costs : (a) for filing / collecting Registration Certificate, and (b) for renewal at ten years, and (c) for "doing things (against infringer(s))" between (a) and (b). The UK Registry and the entities of which you speak may be able to provide "full service" for (a) and (b) but offer little (or nothing) in the context of (c). So much easier (and cheaper) to help a client with (c) if you're already in place for (a) and (b) ....