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