While the phrase ‘attorney’ might seem familiar to many Australians, generally speaking, ‘attorney’ is not used in Australia to identify a legal practitioner. Instead, most legal practitioners are solicitors, barristers, registrars or judges. However, some of the few exceptions are highly specialised patent attorneys and trade mark attorneys. This article will discuss some of the key considerations you may wish to consider when deciding whether to hire a trade mark attorney or a trade mark lawyer.
Trade Mark Lawyers vs Trade Mark Attorneys
Protecting intellectual property (IP), especially trade marks, is a vital concern for businesses and entrepreneurs. To navigate the complexities of trade mark law, you might consider hiring a legal professional, but it is essential to understand the distinction between a trade mark attorney and a trade mark lawyer. Though both professionals operate in the realm of trade mark protection, their roles, qualifications, and scope of practice can differ. Your legal needs must be considered before choosing to engage one or the other.
Trade Mark Lawyer
A trade mark lawyer is a qualified legal practitioner who has completed a law degree, followed by practical legal training, and admission to practice law in one of Australia’s states or territories. They must also hold a current practising certificate. Ultimately, the qualifications of trade mark lawyers are for general legal practice, but in reality, they may choose to specialise. For instance, they may practise primarily in IP law, including trade marks.
Trade Mark Attorney
A trade mark attorney, on the other hand, is a specialist who is registered with the Trans-Tasman IP Attorneys Board. As a result, they are governed by different codes of conduct than general Australian legal practitioners. To become a trade mark attorney, they must complete specific educational coursework in IP law. Trade mark attorneys often come from varied educational backgrounds. They do not necessarily have a law degree (though many do), and their training focuses intensively on trade mark law, sometimes combined with patent law.
Important Considerations Before Hiring a Trade Mark Attorney
As shown above, a trade mark attorney will be highly specialised in trade mark law, with the majority of their education having focused on IP law. In practice, their main focus will be on the technical and procedural aspects of trade mark registration and protection. Their services include:
- conducting trade mark searches;
- preparing and filing trade mark applications;
- managing trade mark portfolios;
- conducting trade mark oppositions; and
- engaging with IP Australia on behalf of their clients.
On the other hand, a trade mark lawyer has a broader legal knowledge that can also provide these and additional services. For instance, lawyers are suited to:
- advising on potential infringement or legal disputes involving IP;
- drafting and negotiating licensing agreements; and
- representing clients in court proceedings if it were necessary to resolve a dispute.
When considering whether to hire a trade mark attorney, you must assess your needs. If you simply would like to hire someone to prepare and file your trade mark applications and discuss brand protection, a trade mark attorney might be suitable. On the other hand, if you have a trade mark infringement issue or potential dispute, a lawyer who specialises in IP might be the most appropriate legal representative for you.
Continue reading this article below the formCost Factors
Trade mark applications involve a set cost payable to IP Australia of $330 per class, per application. However, individual lawyers or trade mark attorneys determine professional fees at their own rate. Therefore, different professionals offer a wide range of per-hour or fixed-fee rates.
As trade mark attorneys are considered ‘experts’ in their field, their fees, whether they are fixed or charged hourly, may be higher than a lawyer specialising in trade marks and IP. Some trade mark attorneys charge separate fees for each stage of a trade mark matter. An example of fees during a trade mark application may be:
- Searching the Australian trade mark register on your behalf.
- Performing their own preliminary risk assessments or comprehensive market clearance searches.
- Drafting and preparing your trade mark application(s).
- Filing your trade mark application(s).
- Ongoing fees, such as time spent on responding to any issues raised by IP Australia and further fees to manage your trade marks down the line.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Protecting your trade marks is essential to building and maintaining your business’s brand. At times, however, this can be a complex process that requires professional assistance in the form of a trade mark lawyer or attorney. Before hiring a trade mark attorney, you should understand:
- the key differences between a trade mark lawyer and a trade mark attorney;
- your needs regarding your trade mark portfolio; and
- potential costs you may incur when hiring an attorney.
If you would like advice on your trade mark portfolio, our experienced trade mark team can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A trade mark lawyer is a qualified legal practitioner who may specialise in trade mark law but can practise in other areas as well. They can also represent you in court if a dispute arises. On the other hand, a trade mark attorney focuses solely on trade mark and IP law but is not necessarily a qualified lawyer.
A trade mark attorney has the discretion to set their own costs. As a result, costs vary depending on the attorney you seek assistance from. For instance, you may incur charges for specific processes or stages within a single trade mark matter.
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