From agent to attorney: a niche profession and a trajectory for access for specialist justice

by Paul Maharg on 20/06/2015

We’re being worked hard — straight into the last session.  Jane Jarman up first in this parallel session, on the above topic, Trade Mark attorneys (TMAs).  It’s all about beer she says, Bass in England, with Lowenbrau and Stella (did I see her say 1366?) being the earliest know.  TMAs were formed 1934.  They (and the Patent Attorneys) survive not because of exclusivity or reserved activity, but because they move from being agents to being lawyers.  Why does this happen?  Because the niche profession develops as it must:

  • Its a relatively small niche profession, pan-UK qualification.
  • Trade mark agents traditionally registered trade marks and managed trade mark portfolios
  • profession gathers pace after the Trade Marks Act 1875 with exponential growth after Trade Marks Act 1938
  • Education and training for the professional exams – Joint Examination Board until 2010.  Why was this change required — because of legislation and economic and social changes. They moved to university education models from an apprenticeship model.  The Legal Services Act also played a part, in terms of liberalising of legal services.

Is this a bellwether for the legal sector?  What is a lawyer?  Here are some of the factors involved in TMA education:

  • Legal professional privilege — as in the Dormeuil Trade Mark [1983] case.  ‘it seems odd and perverse that if a TMA is entitled to advise a client in relation to legal matters and to conduct certain legal proceedings on his behalf, the same privilege should not apply in a case where advice was being given and the proceedings were being donated by a solicitor’  Accepted in Prudential v Special Commissioner for Tax (Pandolfo) [2012] UKSC.
  • Rights to conduct litigation and exercise a right of audience — restricted under the courts and legal services Act 1990 which grandfathered rights and assessment at, arguably, expertise level.  Now, the basic rights at qualification with additional rights available, up to and including Supreme Court Advocacy.
  • Impact of s1 Legal Services Act 2007 increased diversity of the professions/competition between the professions.

If these people are special, why no reserved rights?  Why do they make a living in a liberalised legal services environment?  Hence the adaptation, the shift in the qualification framework from 2010.  Jane paralleled TM specialisation again what she called ‘solicitor-like’ work.  Above all, TMAs are involved in clearance/searching and reporting and portfolio management.  Eg looking after the Dove soap Mark globally.  Their contacts in international TM knowledge and their contacts are deep and extensive.  Thus, children of the industrial revolution, they are optimising for the web and mobile environments, eg web address, domain name disputes, etc.

Fascinating case study of development.  We dealt with it in LETR, but as Jane says, it’s an unusual demographic for legal education, and it was good to hear the detail from the inside.  As she said in response to the question, if TMAs don’t need reserve areas why do lawyers, they don’t!  What about dual qualification, solicitor and TMA?  Jane pointed out that lawyers would want to choose their regulator because of the regulatory burden of one vs the other — no need to guess in which direction.  Hence our work in LETR, appealing for right touch regulation, not lite touch, or the current hugely complex regulatory environments…

Very good presentation by Jane.

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