Monday 27 December 2010

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.

1 comment:

  1. The protected title is "registered trade mark agent". See s.84 of the Trade Marks Act 1994. The register became a register of Trade Mark Attorneys when amendments were made by the Legal Services Act 2007 s.183.
    Acting as an agent in trade mark matters is not a reserved legal activity. There is not much evidence that the buying public attach significance to the title. Although I am on the register, I find that my solicitor title is more important to consumers. In practice, the consumer is not much helped by regulation in this area.
    ITMA are keen that the reserved legal activities should be extended, but it is unlikely that an extension to cover all activities of an agent could be justified. This is particularly true, now that filing services are increasingly offered by automated services.
    Probably the best way for a business consumer to assess whether an agent is any good is to ask which brands they have represented and whether their explanations of the law are helpful.
    Frankly it isn't worth worrying about