The word “attorney” is thrown around a lot in American TV shows like Suits and Boston LegalThe interchanging use of “attorney” and “lawyer” is often a source of confusion. An attorney is not as commonly used in Australia, with the exception of trade mark and patent attorneys. An attorney is used here to describe a person who has specific knowledge of intellectual property (IP) law. However, unlike a lawyer, they do not represent clients in court.

You might be needing some legal help with a trade mark matter, but should you hire a lawyer or attorney? What’s the difference? This article will outline when a trade mark attorney might be the best option to assist to your legal needs.

What Qualifications Does a Trade Mark Attorney Have?

Trade mark attorneys usually have a legal qualification and may also have a licence to practise law, but this is not required. To qualify as an attorney, they must pass a set of stringent examinations on trade mark law. In Australia, they must also be registered with the Trans Tasman IP Attorneys Board and become members of the Institute of Patent and Trade Mark Attorneys (IPTA).

How Are They Different to Lawyers?

Unlike lawyers, they are not required to have a legal qualification or a practising licence. However, they usually will. If you are seeking advice from an attorney, you should consider confirming that they have completed a legal qualification.

Attorneys fall within a separate system for regulatory and disciplinary action than lawyers. Furthermore, a separate professional code of conduct outlines the very strict responsibilities that they are subject to.

Lastly, unlike with lawyers, the confidentiality between a trade mark attorney and their client does not extend to court cases. This is why trade mark attorneys do not represent clients in court.

What Can a Trade Mark Attorney Advise You On?

Trade mark attorneys can assist with a wide variety of matters, including:

  • coming up with advanced brand protection strategies;
  • advising on the use of trade marks;
  • preparing trade mark applications;
  • licensing trade marks;
  • assigning trade mark ownership;
  • enforcing trade marks in Australia or overseas;
  • drafting trade mark agreements;
  • advising on trade mark infringement;
  • advising and assisting with related IP issues (e.g. searching patent and trade mark registers for potential infringement by applicants);
  • opposing others’ trade marks; and
  • responding to trade mark oppositions by making submissions.

A trade mark or commercial lawyer can also undertake some of these tasks. However, the exclusive nature of a trade mark attorney’s specialisation may give some clients additional peace of mind.

Trade mark attorneys do not work in other areas of law such as criminal law. However, they will likely have solid knowledge of other IP areas and relevant commercial law. Attorneys are very valuable if you have niche trade mark questions and they can make the whole process much simpler.

How Do You Know if You Should Engage a Trade Mark Attorney?

Trade mark attorneys have a highly specialised knowledge of trade mark law and its relationship to other areas of law such as:

  • designs;
  • copyright;
  • trade practices; and
  • general commercial law.

Because of this, they are well equipped to advise on complex trade mark issues. If you require assistance with the registration of a trade mark or broad trade mark law strategy, a trade mark attorney may be appropriate. Further, if you need specialised assistance on advanced trade mark strategies both in Australia or overseas, an attorney may be preferred.

However, if you need to bring a matter to court, you should seek out a lawyer instead.

Key Takeaways

Trade mark attorneys are highly specialised professional advisors with very extensive knowledge on trade marks. You should consider engaging a trade mark attorney to provide expert advice, particularly if there are any complex issues involved. If you have a specialised trade mark law issue and would like professional advice, contact LegalVision’s trade mark attorneys on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Amelia Coutts

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