Saturday 29 January 2011

How to Protect Consumers and Regulation - Titles and the Unregulated

Having read the various comments in response to the post The Great Unregulated (why so many anonymous?) I think the issue is not whether there are regulated firms that provide poor value, or unregulated ones that are excellent, so much as whether the area of advice is important enough for society to ring fence in some way to protect consumers. For example, nobody would dispute that only doctors should be let loose on the public to provide certain types of services. So, that is the question, what types of legal services should be reserved activities that only lawyers, patent attorneys, trade mark attorneys, or whatever other discipline is permitted to provide?

Consumer protection?

If the aim of the Legal Services Act is in part, consumer protection, then these sort of questions need to be considered. Fine distinctions between trade mark attorney, and registered trade mark attorney, or trade mark agent, are not going to be easy for the public to understand. The question is, should the public be protected against the clerical assistant who worked for a short stint in a law firm, and who then sets himself up in business as a trade mark agent because they can’t find any other work? Their knowledge may be miniscule, but it will be greater than that of the lay public, so they may well be able to attract work if they price themselves cheaply enough. Does society think that trade mark registration is important enough to become a reserved activity? What about web design, search engine optimisation, marketing and many other areas where anyone can set up in business…. with little experience, and pick up the ropes as they go?

The Unregulated

What is unhelpful in my opinion is the rivalry between professional bodies, and all the protected titles that are devised in order to mark out a particular group as the ones who should be consulted above all others for that particular area of work. Surely, other regulated entities are not the real problem. If the people who should not be allowed to mislead the public by use of titles are the unregulated sector, (possibly those people with little background in law, who may be passing themselves off as suitable to provide legal services), then let's find solutions to stop some of their unregulated activities.

If we thought trade mark registration work should be a reserved activity, then it might be relatively easy to prevent certain people filing trade marks as agents for others. They might still find a role providing help to the public to draft their own applications, but at least their limited capacity to act would mark them out as a different type of trade mark agent. But in the absence of some radical measure like this to distinguish between providers, what is the point of reserving use of titles, if there would be some other title that the unregulated would be able to use in order to provide their desired service?

Protecting Titles

In the meantime, we are in the ridiculous situation where confusion reigns over who may or may not call themselves trade mark attorneys. For example, recently, after verifying on this post that there appeared to be an error in the IPO’s booklet Choosing the Right IP Adviser I wrote to the IPO to point out that solicitors could also call themselves trade mark attorneys and could they please correct the error. To my astonishment this week I received the following reply from ‘Debbie’ of the iPO:

Thank you very much for your feedback on the 'Choosing the Right IP Adviser' booklet which has been forwarded to me from Paolo Senese. Please accept my apologies for the delay in response but I have been absent due to a bereavement.

I can confirm that the point you have raised re: page 7 about Trade Mark Attorneys is being looked at. This issue has also been raised by another Attorney.

The text in the booklet was taken from the CIPA website relating to Trade Mark Attorneys and cleared internally by TM colleagues, but as you rightly state this does not tie in with Section 84 of the Trade Marks Act 1984. Thus, "trade mark agent" and "trade mark attorney" remain open for anyone to use.

I have been discussing with CIPA and I understand that the Protected Titles Committee recently considered the matter and was making a report to Council on 5th January in which it is suggested that the public would be misled now by anyone using the term if they are not on the Register of Trade Mark Attorneys. The reason for this is that the treatment of trade mark attorney is now in all other respects analogous with the treatment of patent attorney and with the "Register of Trade Mark Attorneys" now in place the public is likely to assume that someone using the title is entered on the Register. Thus the Committee is proposing that Council should issue guidance to Fellows that they should not use the title unless they are also entered on the Register. Whether that will be accepted by Council I do not know and am trying to establish the outcome of the report with CIPA.

CIPA has confirmed that they will not be updating their website until the outcome is known with the view that I would amend the publication at that time.

I will be more than happy to provide you with an update when I hear anything further from CIPA.

Thank you for your interest in the IPO publications and if you have any further feedback in due course this would be most welcome.

I was amazed that the IPO seem to think that CIPA have the right to make changes except possibly with regard to their own members. If CIPA wish to issue guidance to Fellows that they should not use the title Trade Mark Attorney unless they are also entered on the Register, I doubt this would have effect on anybody else’s use of this term. It's also surprising that the CIPA website has this statement about the term Trade Mark Attorneys. What happened to consultations with other interested parties?

While I agree with CIPA that all these terms are confusingly similar, I do object as a solicitor, to them effectively trying to deprive solicitors of the use of the title. It speaks volumes about the problems that need to be addressed. I read recently that there is a realisation that greater consideration is needed as to the activities that should be reserved and what Alternative Business Structures (ABS) will be able to provide once legal services are deregulated. Otherwise, consumers are in danger of being misled.

While Jeremy’s suggestion that some further research is needed in this area is correct, it clearly needs to focus on both regulated and unregulated IP providers.


  1. By an large the user of IP services are companies and there is very little imbalance between those companies and their advisers. I can't see how a consumer protection argument can be used in that context.

    We live in a market economy where businesses should be free to chose whom they engage and contract with. It is up to the market and the law of contract to regulate these relationships. For example sophisticated businesses will be best placed to evaluate the risks involved in engaging a particular adviser and will no doubt do the necessary due diligence.

    It is hard to see why the state should impose extra regulation in this regard except to benefit a protected sector from competition and to create a higher barrier to entry for innovation.

    The current system of regulation is centuries out of date and if it is not modernised innovative service providers will eventually find ways to bypass it.

  2. Shireen, what you are describing appears to be an attempt by some in ITMA to monopolise the expression "trade mark attorney". The recent registration by ITMA of a trade mark for the name trade mark attorney indicates a similar trend. I agree that it is irrelevant to the wider world whether CIPA makes a recommendation to its fellows about such usage.

    My own view is that patent agents, trade mark agents and solicitors have far more in common than divides them, particularly now that we are all regulated under the same overall umbrella as legal service providers. The enemy is unregulated advisers, not each other. I wish this were recognised more. Intra-family squabbling over use of the name attorney is unseemly, but is likely to continue as long as extreme positions are taken.

    Whilst the position was once (back in the 1980s, when the CDPA Bill was being debated) solicitors attempting to recover the name attorney (as in patent attorney or trade mark attorney), which the Law Society abandoned in the late 19th century (see Royal Charter of 1903 at, now it is some trade mark agents trying to prevent anyone not on the register of trade mark agents from using the name trade mark attorney.

    Regrettably, as solicitors we are going to need to keep being vigilant as these ITMA initiatives keep coming.

  3. May I add a comment that takes the issue slightly away from the “regulated v unregulated” debate? It also includes the arrival of competitors whose activities will be governed by regulators, other than the current ones (i.e. the SRA for solicitors, the Bar Standards Board for Barristers and IPReg for Patent and Trade Mark Attorneys). This will provide competition that may have particular relevance in the litigation field. But, as Patent and Trade Mark Attorneys may react to unregulated competition in their “core” areas of work by undertaking more litigation, it may have a less direct across the whole IP field.

    This is part of the climate of reform generated by the regulatory objectives of the Legal Services Act 2007. It is already opening up the field for regulators of legal services and increasing the potential for such organisations to extend their regulatory scope, a trend that is likely to accelerate with moves to further expand the pool of approved regulators or licensing authorities for the new Alternative Business Structures from 2011.

    New and established professional, representative bodies, as well as approved regulators, appear to be involved in something akin to a regulatory “land grab” at present. The same volatility will be seen as some of those new entities seek to “cherry pick” lucrative work types and supply legal services via a variety of new business models. Although much of the commentary in the press has focused on consumer facing legal services such as conveyancing, personal injury and private client work, it seems clear that commercial areas of work will also be targeted. Specialist areas such as insolvency and business restructuring and employment may be the prime areas for this sort of activity but it seems likely that the field of intellectual property will also be targeted as providing a lucrative service sector, especially for SMEs.

    The most volatile area in the regulated sector has proved to be the acquisition of rights to conduct litigation and rights of audience before the courts. It is seen as emblematic of the status and function of “the lawyer”. Last year saw the following developments:

    a) Ambitious plans advanced by the Council for Licensed Conveyancers to acquire litigation and advocacy rights and by ILEX Professional Standards and the Institute of Legal Executives, for rights in new areas, such as to act as associate prosecutors.
    b) The Association of Law Costs Draftsmen (“ALCD”) also unveiled plans to change its structure to encompass only two levels of membership; trainee costs lawyer and costs lawyer. The result will be to increase the number of the newly framed “costs lawyers” with rights to appear before the courts (including the Supreme Court) on costs related matters.
    c) The publication of a consultation paper by a Joint Advocacy Group drawn from the SRA, BSB and ILEX on a common quality assurance scheme. At that stage it addressed criminal advocacy only but it reflects a trend towards common standards across all those operating in a particular field of litigation.
    d) The relaxation by BSB of the practice requirements for barristers in recent months with the advent of the launch of the Bar Council’s new procurement company model “ProcureCo” allowing barristers to work together with other professionals and the extension of direct access provisions.

    Against this background the moves by ITMA and CIPA to revise their regulations for litigation rights are crucial. The result will be a less strenuous training regime for those wishing to undertake litigation. That will ensure that Attorneys do not face barriers to undertaking litigation that are significantly harder to overcome than those facing other professionals.

  4. As a member of the CIPA Protected Titles Committee, I do have to declare an interest here. It is going to be hard for Council to take the moral high ground and take Shireen's advice and recommend that their members should not do ( use trade mark attorney) what solicitors and the rest of the world can.
    Unless and until the IPO feel that it would be preferable to exclude incompetent representatives, nothing will happen.
    Maybe the fact that the IPO itself does not require legal qualifications for employment as a trade mark examiner or hearing officer, makes this unlikely. Trade marks are judged as perceived by the public and used exclusively in business. Although created by statute they may well have more in common with commercial activity than the legal sphere. There is a good argument we should shoo all the argumentative lawyers out of the house altogether.

  5. Many non-IP savvy businesses as well as individuals make use of the IP system so regulation is necessary to ensure people are able to appropriately provide the services they sell. Speaking as a qualified person with no interest in dealing with individuals, or for that matter, ignorant businesses who want everything done on the cheap, I still believe that these people should be protected from the rogues around us. Regulating only those who use protected titles is pointless when other non-protected titles can be used and most people do not understand the differences anyway.

    As for solicitors using the titles Trade Mark Attorney and Patent Attorney, then that is fine by me provided they have reached the same standard of qualification as Trade Mark Attorneys and Patent Attorneys.

    Intra-professional competition is indeed pointless, but is mainly because as a niche profession we are not an intimate nearmcopart of the solicitor/barrister regime.