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Monday, 7 January 2008

TRADE MARK ATTORNEY application withdrawn

The IPKat's eagle-eyed friend Philip Cooper (Crossguard) has pointed out that the application of the Institute of Trade Mark Attorneys to register the words TRADE MARK ATTORNEY as a certification mark for services in Class 42 ("Professional, legal and research services relating to industrial and intellectual property; name creation services; searching services; trade mark and design filing and prosecution services; advisory and consultancy services in the field of industrial and intellectual property; maintenance and renewal services; trade mark watch services; trade mark and design services") has been withdrawn (you can read the application's history here). The application was already labouring under a heavy disclaimer that

"1. This certification mark shall not prevent a person who is entered on the list of professional representatives before the Office of Harmonisation in the Internal Market (OHIM) in pursuance of the Community Trade Mark from using the title "European Trade Mark Attorney".

2. Nothing in these regulations shall prevent the use of the title "Trade Mark Attorney" by any person who is a registered trade mark agent".
Adds Philip,
"It would have been helpful, I think, to those of us who are qualified if ITMA had succeeded in registering the title TRADE MARK ATTORNEY as a certification mark – as it stands at present there seems to be no specific prohibition on anyone being able to use this, and being able to use the protected title REGISTERED TRADE MARK ATTORNEY is not an effective substitute.

This is unlike the situation with other professions, as you can’t use the simple titles “Dentist” or “Solicitor” or even “Patent Attorney” without it being an offence".
The IPKat considers that, while it is entirely proper for a responsible professional institution such as ITMA to play an active role in policing the use of terms that suggest professional expertise or qualifications by people who lack them, it seems wrong to leave the fate of a term such as "trade mark attorney" to the vagaries of the trade mark system rather than legislating for them up front. Merpel says, if all else fails, ITMA may as well try registering the words as a Community design: "trade mark attorney" is no less a protectable design than some of the other stuff that's sitting on the register ...

4 comments:

Anonymous said...

The disclaimer was indeed significant. It appeared that the mark did not affect those who were Registered Trade Mark Attorneys.

Who exactly was the mark supposed to be certifying?

Who of those not qualified as Registered Trade Mark Attorneys could be certified, and for what?

Anonymous said...

I think the previous commenter may have it the wrong way round. As I understand it, at present any Tom, Dick or Harry can call him/herself a Trade Mark Attorney. (At least, the part of the CDP Act which refers to such things forbids the use of the term *registered* trade mark agent.) So by getting a trade mark for "trade mark attorney", you are not saying that those certified to use the trade mark are better than your average trade mark agents, you are saying that they really are trade mark agents in the first place.

But I'm not an expert, so I await corrections with interest...

Anonymous said...

ITMA’s press release – see this link - http://www.itma.org.uk/news-events/press-releases/press-view.php?id=178&date=15%20Oct sheds more light on the reasons behind the withdrawal of the CTM application – it would seem that the Law Society will now support ITMA in obtaining legislation to put the title TRADE MARK ATTORNEY in exactly the position you envisaged.

Anonymous said...

Legislation would certainly be required to achieve the result ITMA want.

s.82 TMA 1994 makes it clear that agents may act for others in obtaining trade marks, and s.83 makes it clear that a Register may exist, but there is no obligation for agents to register.

Only registration gives access to the protected title of "Registered Trade Mark Agent" and the consequent legal privilege.

Indeed Tom Dick and Harry are currently entitled to use the title "Trade Mark Attorney", but that appears to be what government wanted [at least in 1994].

As for the suggestion that a certification mark can certify that persons act as agents but are not on the register, is this any useful form of certification?

A certification mark is supposed to distinguish goods or services which are certified from those which are not. I am not aware of any certification mark which in effect says "The persons certified are persons who supply a service but are not qualified to provide that service".

Negative certification marks have a certain attraction as a means of blackballing rogues but the ITMA certification mark did not achieve even this.

The ITMA certification mark attempted to say that it would certify those not qualified for entry on the Register of Trade Mark Agents, but those who were so qualified were not affected by the certification mark and could use it regardless. This would provide no useful information to the public and would fail in the sheep/goat sorting test.

By the way, for those who beleive that "Agent" and "Attorney" mean something different, at least one dictionary definition of Attorney reads "An agent or representative authorized to act on someone else's behalf". The Compact OED has the definitions:-

1 a person appointed to act for another in legal matters.

2 chiefly US a lawyer

Attorney may sound grander than agent, and may be a good word to bamboozle Americans with, but in UK English at least it has a more restricted meaning.

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