I am often asked what is a trade marks attorney, and is it a type of solicitor?
The short answer is that a trade marks attorney is someone who has particular educational qualifications and who is registered by the Professional Standards Board for Patent and Trade Marks Attorneys.
Essentially, trade marks attorneys and solicitors are different species of legal professionals.
A trade mark attorney is not a solicitor, but many trade mark attorneys also have legal qualifications and are admitted to practice as solicitors should they choose to do so.
Generally speaking, the job of a trade marks attorney is very similar to that of a solicitor who practices in the field of trade marks. For example, a trade marks attorney will:
- Provide legal advice in relation trade marks and related matters (including clearance searches and infringement opinions).
- Prepare and file trade mark applications.
- Respond to objections to trade mark applications, including preparing and filing evidence and submissions to IP Australia.
- Represent trade mark applicants or opponents in trade mark opposition proceedings before the Registrar of trade marks.
- Prepare trade mark assignments and licences.
- Prepare trade mark agreements, including settlement agreements or co-existence agreements.
The major difference between a trade marks attorney and a solicitor is that attorney firms do not litigate. Generally, when litigation arises, this will be referred to a specialist IP litigation firm.
Further, attorney firms in Australia are governed by a separate Professional Code of Conduct and not by legislation and rules that govern solicitors. Nevertheless, trade marks attorneys are professional advisors, and are bound by rules of professional conduct and fiduciary duties. Advice given by trade marks attorneys is also subject to a statutory privilege.
Unfortunately, given it is not compulsory for all trade marks attorneys to have legal qualifications (although most usually do), this can lead to some individuals becoming registered as trade marks attorneys who are not properly equipped or trained to provide high quality professional advice.
When selecting a legal professional to provide advice on trade mark matters, whether they be a solicitor or trade marks attorney, it is important to look past the title and give more consideration to the individual’s qualifications and experience. Trade mark law is a highly specialised field and trade marks attorneys are often best equipped to give the most knowledgeable and practical advice.