As ever, readers' comments and experiences are appreciated, whether from the UK or beyond, on this important issue. Thanks, Aaron, for sharing your thoughts.
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.
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).
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: