Trade Marks Attorney Registration

Why Register

• only registered trade marks attorneys have the right to use the titles "trade marks attorney" and "trade marks agent"

• your clients have the same right as a solicitor to privilege in respect of professional communication

• you have a right of lien over client documents in certain circumstances

• you are subject to statutory discipline provisions and governed by a voluntary professional code of conduct

Learn more about the

• Right of Practice;
• Right to Title;
• Partnerships;
• Privileges and ;
• Standards of Service.

Right of Practice

Registration is not compulsory for practice in trade marks matters - anyone has a right to practice before the Trade Marks Office on behalf of another person for gain.

However, only registered trade marks attorneys can practise as trade marks attorneys and have the other rights attached to registration.

Only registered trade marks attorneys, patent attorneys, legal practitioners or people with the right to practise as trade marks agents under the Trade Marks Act 1955 can practise as trade marks agents. [Sub section 156(1) of the Trade Marks Act 1995]

Right to Title

Only registered trade marks attorneys are permitted to describe themselves or hold themselves out as trade marks attorneys. [Sub section 156(1) of the Trade Marks Act 1995]

You are not permitted to describe yourself as a trade marks agent unless you are a registered trade marks attorney, patent attorney, legal practitioner or someone with the right to practice as a trade marks agent under the Trade Marks Act 1955. [Sub section 156(2) of the Trade Marks Act 1995]

Penalty

Those describing, holding themselves out or permitting themselves to be held out or described as trade marks attorneys or trade marks agents when not entitled to do so will incur a penalty of $3000.

Office holders of body corporates found guilty of the offence can individually be liable for $3000 where they were knowingly party to an offence.

Partnerships

There is no restriction on partnerships for trade marks attorneys or trade marks agents other than restrictions imposed by other professions they might partner with, such as patent attorneys or lawyers.

Privileges

A registered trade marks attorney is entitled to prepare all documents, transact all business and conduct all proceedings in accordance with the provisions in the Trade Marks Act 1995.

However, registered trade marks attorneys are not authorised to prepare documents to be issued from or filed in courts or to transact business, or conduct proceedings, in courts attorneys unless they are also legal practitioners.

Communications

Communications between registered trade marks attorneys and their clients in intellectual property matters - and any record or document made for the purposes of such communications - are privileged to the same extent as communications between solicitors and their clients. [Section 229 of the Trade Marks Act 1995]

For the purpose of privileged communications intellectual property is defined as:

Lien

Registered trade marks attorneys have the same right of lien over documents and property of clients as solicitors.

Standards of Service

Code of conduct

A Code of Conduct for Patent and Trade Marks Attorneys was developed by the Professional Standards Board following consultation with interested parties and with the cooperation of the Australian Competition and Consumer Commission (ACCC).

The Code of Conduct applies to all registered patent and trade marks attorneys including those employed in companies undertaking the business of the company.

The aim of the Code is to:

Further information and hard copies about the Code or the complaint process can be obtained from the Secretary.

Discipline of registered trade marks attorney

Registered trade marks attorneys may be disciplined on the following grounds:

Complaints are lodged with the Secretary of the Professional Standards Board for Patent and Trade Marks Attorneys.

The Board is required to seek relevant information from the attorney and any additional information from the attorney or the complainant before determining whether it appears the attorney may be guilty of unprofessional or unsatisfactory conduct.

Where the Board considers the attorney may be guilty of unprofessional or unsatisfactory conduct, being unqualified at the time of registration, or obtaining registration by fraud, it is required to authorise the complainant to bring the complaint to the Patent and Trade Marks Attorneys Disciplinary Tribunal.

The Patent and Trade Marks Attorneys Discipline Tribunal determines whether the attorney is guilty of the charge. Where the attorney is found guilty of unprofessional or unsatisfactory conduct, it may:

Where the attorney is found to have been unqualified at the time of registration the Tribunal may:

In the case of fraud, the Tribunal is required to cancel the registration.