Do you picture scenes from Suits or Law and Order when you hear “lawyer” or “attorney”? You might not know the difference between the two, especially in Australia. The terms are often used interchangeably, but there’s one key exception: trademark attorney.
Trademark attorneys are qualified pros who specialize in trademarks. They belong to organizations like the Institute of Patent and Trademark Attorneys of Australia (IPTA). But what sets them apart from trademark lawyers?
Regulation: Trademark attorneys are registered with the Trans-Tasman IP Attorneys Board, while trademark lawyers aren’t. Attorneys follow a separate Professional Code of Conduct and have fiduciary duties.
Privilege: Registered trademark attorneys have Trademark Attorney Privilege (TMAP). This privilege helps clients communicate freely without fearing the information will be used against them.
Litigation: Trademark attorneys can’t litigate. When litigation is needed, they may refer clients to a specialist IP litigation firm.
If you need technical advice on disputes or infringements, a trademark attorney is your best bet. But if you just need someone to draft and file your trademark, a lawyer is a good option.
Trademark law is a specialized field, and trademark attorneys offer practical, experienced advice. But remember, they can’t litigate, and not all have legal qualifications.
Confused by “attorney” and “lawyer” on TV? In Australia, we mostly use “attorney” for trade mark and patent experts. These pros know intellectual property (IP) law inside out. But they don’t represent clients in court like lawyers do.
Trade mark attorneys often have legal degrees, but it’s not required. They must pass tough exams on trade mark law and register with the Trans Tasman IP Attorneys Board in Australia.
Attorneys don’t need law degrees like lawyers. They have specialized IP training instead. They also follow a different professional code and face separate disciplinary actions.
Trade mark attorneys assist in:
A trade mark or commercial lawyer can do some of these tasks too. But an attorney’s expertise might give clients extra peace of mind.
If you need help with complex trade mark issues, like registering a mark or crafting a protection strategy, consider hiring an attorney. They often know international trade mark laws and have contacts abroad.
But if you need to go to court, hire a litigation lawyer instead. They’re trained in evidence and court procedures. Just check if your trade mark attorney is also a lawyer, as they might be able to help in court too.
Trade mark attorneys are specialized pros with deep knowledge of trade mark law. They can help with many tasks and provide expert advice, especially on complex issues. If you need help with a trade mark issue, consider hiring an attorney.
What’s the difference between a trade marks attorney and a lawyer?
Trade marks attorneys don’t need legal degrees like lawyers, but they must pass exams and register with the Trans Tasman IP Attorneys Board. Attorneys generally don’t represent clients in court, while lawyers do.
What can a trade marks attorney help me with?
Attorneys can help with many trade mark-related tasks, such as registering marks, advising on their use, enforcing and opposing marks, and developing brand protection strategies in Australia and abroad.
Trade mark attorneys offer expert advice on trade mark law, including complex issues that overlap with other areas of law. They play a vital role in protecting businesses’ intellectual property and preventing losses from trade mark infringements and missed opportunities.
Trade marks attorneys and solicitors are distinct types of legal professionals. A trade marks attorney has specific qualifications and is registered by the Professional Standards Board for Patent and Trade Marks Attorneys.
Trade mark attorneys can do similar work to solicitors who practice in the trade marks field. For example, they can:
The main difference is that attorney firms don’t litigate. When litigation arises, they usually refer the matter to a specialist IP litigation firm.
Attorney firms in Australia follow a separate Professional Code of Conduct and not the legislation and rules that govern solicitors. However, trade marks attorneys are professional advisors, bound by rules of professional conduct, fiduciary duties, and subject to statutory privilege.
Unfortunately, not all trade marks attorneys have legal qualifications (although most do), which can lead to some registered attorneys who are not adequately equipped or trained to provide high-quality professional advice.
When choosing a legal professional for trade mark matters, focus on the individual’s qualifications and experience, rather than their title. Trade mark law is highly specialized, and trade marks attorneys often have the best knowledge and practical advice.
The right IP advice is crucial to your business. When starting with patents, design protection, and trade marks, it’s essential to contact an IP Attorney.
IP Attorney or IP Lawyer/Solicitor: What’s the difference?
Patent and Trade Mark Attorneys specialize in obtaining IP rights for clients, while IP Solicitors typically handle in-depth litigation or licensing issues related to IP rights. Patent and Trade Mark Attorneys help ensure new products or brands don’t infringe on others’ IP rights, working with you to protect and monetize your innovations effectively.
Make sure your IP advisors are qualified Intellectual Property Attorneys, as this will save time and money in developing the most effective IP strategy for your invention, technology, or brand. Most specialist IP firms offer some initial advice for free.
To call yourself a ‘trade marks attorney’ or ‘trade marks agent’ and enjoy rights like professional privilege, you must be registered. Here’s what you need to do.
An Australian trade mark attorney advises clients on trade mark matters such as searches, filing, registration, assignments, enforcement, international applications, and the Madrid protocol. Although anyone can file trade mark applications, registration as a trade mark attorney has benefits.
To become a registered trade mark attorney, you must meet the standards set by the Professional Standards Board of Trade Mark and Patent Attorneys. These include:
A law degree and knowledge of other intellectual property forms are advantageous.
Complete four course groups:
Obtain knowledge requirements through accredited courses or apply for exemptions.
Complete Board-accredited courses of study within the past 10 years or gain a Board exemption for non-accredited courses within the past 5 years. The curriculum consists of 4 topic groups:
Several universities offer Board-accredited courses. Apply for an exemption if you have completed a non-accredited course of study within the last 10 years.
Demonstrate good fame, integrity, and character by providing declarations regarding offenses and a declaration by another person regarding your character.
To become an Australian trade mark attorney, have a clean record, technical knowledge, and educational requirements. The field is competitive, so experience and work environment may determine your success.
To be eligible, have a diploma-level or higher qualification from Australia, New Zealand, or overseas equivalent. Demonstrate knowledge of IP law and practice. Fulfill personal requirements like good character.
Trademarking is crucial for businesses. It safeguards your unique brand from rivals. Here’s a guide to register your Trademark in Australia.
The right term is “How to Trademark a logo and business name.” Your logo is automatically Copyrighted upon creation. If you hired a designer, ensure they transfer the Copyright to you. Then, register your logo as a Trademark.
Business names can’t be Copyrighted. To protect your business name, register it as a Trademark.
This is up to you. Consider Trademarks for brand identifiers. Some businesses register multiple Trademarks for their name, logo, and tagline.
A Trademark is a valuable asset. It protects your brand and prevents imitation.
For example, if Billabong didn’t register a Trademark, anyone could imitate their products and even register Billabong Trademarks themselves!
By registering a Trademark, you control your brand. It lets you sell your brand if you ever sell your business.
Apply online through IP Australia. Provide information like:
Make sure your application is accurate to avoid protection issues.
Many businesses are recognized solely by their logo. Trademarks protect your brand identity under IP law, setting your business apart from competitors.
The more successful your business, the more valuable your Trademark. It protects your reputation. As a registered Trademark owner, you get exclusive rights to use and authorize others to use your Trademark, sell it, and get national coverage.
You can trademark various elements of your brand, including scents, movements, sounds, and even plants! IP Australia provides a list of different types of trademarks and registration processes.
To apply, you must:
Certain signs are prohibited, making it harder to register a Trademark. Avoid denoting kind, quality, purpose, or value, using common surnames/geographical names, conflicting with earlier trademarks, or potentially misleading the public about the goods/services.
If your Trademark meets the requirements, apply online. IP Australia examines your application, which takes around 13 weeks.
Registering a Trademark is simple if you follow the rules. Unique and relevant Trademarks, which don’t conflict with existing ones, speed up the process.
Logos are valuable business assets that leave lasting impressions. Consider trademarking your logo with the USPTO. Trademarking a logo is fairly straightforward, but consider important factors before, during, and after the application.