Author Matt Sammon
The term Chartered Trade Mark Attorney is often misunderstood, and there is a lack of readily available information surrounding the role, qualifications and the benefits that a good Trade Mark Attorney can bring to your brand. In this article we discuss what a Trade Mark Attorney is, the role that we have, and the way to identify a good Trade Mark Attorney.
What is a Trade Mark Attorney?
In short, a Chartered Trade Mark Attorney is a specialised legal practitioner in the areas of trade marks, copyright and designs, which collectively fall under the umbrella of Intellectual Property.
A Trade Mark Attorney is not a Solicitor, although some do qualify as both. Most Trade Mark Attorneys and Solicitors will have a law degree, but from there, the similarities end.
There are a number of different qualification routes for a Solicitor, however currently the most common route will be to undertake the Legal Practice Course (LPC), and then undertake a two year training contract, during which they will generally take four “seats” in different departments which may, or may not, include Intellectual Property. (Although it should be noted that the solicitor qualification route is undergoing a dramatic change with the introduction of the SQE in the not too distant future).
In contrast, following graduation, a Trade Mark Attorney specialises in three of the four key areas of Intellectual Property – trade marks, copyright and designs – right from the start, and does not focus on any other area of the law. Trade Mark Attorneys undertake two specialised post-graduate qualifications in Intellectual Property law and Intellectual Property practice, and all experience that they gain during the training process is solely in respect of these three key areas of Intellectual Property.
A practicing Trade Mark Attorney is regulated by the Intellectual Property Regulation Board (IPReg) and not the Solicitors Regulation Authority (SRA). In 2016, the Institute of Trade Mark Attorneys was awarded a Royal Charter, enabling Trade Mark Attorneys to use the title “Chartered Trade Mark Attorney”, demonstrating the specialised expertise, trust, skill and quality of service Trade Mark Attorneys provide.
What does a Trade Mark Attorney do?
A Trade Mark Attorney will advise you on all aspect of trade marks, copyright and designs. We will help you to formulate an Intellectual Property strategy, we will identify potential areas for protection, we will assist you in the protection of your Intellectual Property, and we will help you to defend your rights and legal position against third parties where required.
In the UK, Trade Mark Attorneys are qualified to represent you before the UK Intellectual Property Office, the European Union Intellectual Property Office and the World Intellectual Property Organisation in respect of trade marks, copyright and design matters. We are experts at navigating the various different protection systems throughout the world, and are qualified to litigate in the courts on your behalf, although many will also engage the services of experienced litigators in this process.
Where does a Trade Mark Attorney work?
You can find a Trade Mark Attorney in lots of different places. Some will work in private practice for specialised Intellectual Property firms, whereas others may be employed in full service law firms within the Intellectual Property department.
Trade Mark Attorneys in private practice will work with a vast array of different clients in different commercial sectors from fashion, retail and FMCG to banking, gaming, pharmaceuticals and automotive. Trade Mark Attorneys in full service law firms will commonly advise on the Intellectual Property aspects of larger commercial deals within the corporate and commercial teams.
Trade Mark Attorneys can also work inhouse, typically for brand heavy organisations, where they will fulfil the same role, but in a more specific commercial area.
Trade Mark Attorneys will work with a wide range of different departments within an organization. We will deal with marketing teams who are developing new brands and marketing campaigns, slogans and straplines, we will deal with management teams to formulate Intellectual Property strategies, and we will deal with legal departments to assist in the legal clearance, protection and preservation of their Intellectual Property.
Do I really need a Trade Mark Attorney?
Trade Mark Attorneys are highly specialised, and have an in-depth knowledge of the complex systems that make up the worldwide network of Intellectual Property protection.
A good Trade Mark Attorney will be able to discuss your needs with you at the outset, and will be able to make recommendations based on their knowledge and experience to guide you in the best direction. A good Trade Mark Attorney will be able to identify ways and means of improving your Intellectual Property protection, and will be able to advise on best practice in Intellectual Property strategy.
Taking the time to discuss your needs with a Trade Mark Attorney in advance of taking action will arm you with best possible knowledge and strategy for your brand, whether you are a start-up, an established brand, or an international corporation.
How should I choose my Trade Mark Attorney?
Take a look at our earlier blog on choosing your Intellectual Property firm which will guide you towards the right IP solution or services for your brand.
Your Trade Mark Attorney should take the time to discuss your needs with you and to understand your business and your aims. A good Trade Mark Attorney will identify the issues that are specific to you, and will be able to advise you accordingly. For example, a tech start up will have very different needs for meeting their vision and strategy for their brand compared to, for example, an established retail enterprise looking to expand or develop their service offering, or looking to conduct an Intellectual Property audit.
Finding an affordable Trade Mark Attorney
A good Trade Mark Attorney will understand your budget and will be able to advise you on the most suitable methods of protection to fit within your strategy and your budget. Pricing should always be transparent and clear, and should meet your needs. Your Trade Mark Attorney should be willing to discuss various different pricing models with you to ensure that you select the best option available to you – in current commercial settings, hourly-rate billing is very rarely the best fit for you as the client.
At Sonder & Clay, we take a refreshing approach to fees and provide straightforward, strategic IP advice that is tailored to each of our client’s business needs and goals. When comparing Trade Mark Attorneys consider them from a value for money perspective rather than solely cost, cheap is not always effective and, expensive doesn’t always mean quality.
When you have found a good Trade Mark Attorney, they will quickly become your first telephone call when a new brand, marketing campaign or commercial offering is being considered, and they will embed themselves in your internal teams, becoming a trusted advisor whose advice is indispensable when considering Intellectual Property strategy and in the preservation of your rights. A good Trade Mark Attorney will become a great asset to your brand for a very long time.
We create real IP value
From the everyday to the IP emergency, our accomplished Chartered Trade Mark Attorneys and IP Solicitors are driven to get the very best outcome for every brief for every client, every time! Sonder & Clay are a full service IP law firm with proven expertise and results in IP protection, strategy, disputes, and exploitation. Learn more about our IP services or get in touch with us for a complimentary IP audit today.