Following our article on the difference between Patent Attorneys and Solicitors, we are looking today at how Trade Mark Attorneys differ from Solicitors and how you would work together with a Trade Mark Attorney to protect your brand.
What is a Trade Mark Attorney?
Irish Trade Mark Attorneys are qualified specialist in Trade Mark law who work within the framework of trade mark specific legal texts such as the Irish Trade Marks Act 1996, in contrast to a Solicitor who would have expertise in a broader legal field. There is no requirement for Irish Trade Mark Attorneys to study other aspects of the law aside from trade mark law and practice. An Irish Trade Mark attorney sits and passes specialist exams and is entered on the Register of Trade Mark Agents which is administered by the Intellectual Property Office of Ireland.
What is a Solicitor?
In contrast, Solicitors and Barristers are legally qualified, usually with a degree in law and typically further legal qualifications enabling them to be entered onto the Roll of Solicitors or Roll of Practising Barristers. They usually specialise in different parts of the law, e.g. family law, criminal law, commercial law, etc. While a Solicitor or Barrister may have a knowledge of intellectual property law, this is typically within the wider context of commercial law.
How do I work with a Trade Mark Attorney?
Once you have created your brand, your Trade Mark Attorney is the expert to advise you how best to evaluate your brand to ensure that it is available for registration and is in fact registerable. Your Trade Mark Attorney will also evaluate the business to ensure that your trade mark application will cover all of the goods and services of interest to your company. Your Trade Mark Attorney will then be able to advise and assist you in protecting that trade mark in the relevant countries, whether it is in the countries where your Attorney can practice ( in M&Ds case we can act directly before the Irish, UK and EU Intellectual Property Offices ) or whether it is further afield in the US, China, or, for example, Australia through Associates in the various countries.
The application process can throw up queries, objections and third party oppositions which your Trade Mark Attorney can help you to navigate in order to obtain the best results. Once you have a registered trade mark you can use this trade mark to enforce your rights i.e. to stop others from selling goods or services that are identical or similar to yours using an identical or confusingly similar trade mark thus possibly causing confusion within the market place.
How can my Trade Mark Attorney help me enforce my IP rights?
The first step in enforcing your rights is to make the offending 3rd party aware of your registered trade mark. Should this prove to be ineffective, your Trade Mark Attorney can draft a cease-and-desist letter specifically outlining how the offending 3rd party is infringing your trade mark and how this situation can be resolved. Should the offending 3rd party continue to infringe your registered trade mark, it may be necessary to commence infringement proceedings through your National Courts.
When might I need assistance from a Solicitor?
As your Trade Mark Attorney is only authorised to represent you at the National and European Trade Mark Offices, at this point you will need to engage a Solicitor and potentially at a later stage a Barrister. Your Solicitor will assess the merits of the infringement case from a legal perspective. Your Solicitor is authorised to represent you before the National Courts while a Barrister will then present your case in the National Courts. During this time, your Trade Mark Attorney will continue to assist you in understanding your trade mark rights and the process of infringement and will assist you and your Solicitor in understanding the legal considerations of your infringement case. All three (Trade Mark Attorney, Solicitor and Barrister) will work together as a team to achieve the desired outcome for you from any such infringement proceedings at the National Courts.
Should you need assistance with your Trade Mark, please contact us at mail@maclachlan.ie and we would be pleased to assist you.