Careers
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The job of a trade mark attorney is to advise your clients on a wide range of trade mark-related issues, and to act on their behalf in dealing with the registration authorities in the UK and European Union and, through local associates where necessary, overseas, as well as with third parties. You must therefore have a thorough grounding in UK and foreign trade mark law and practice, and a working knowledge of related issues such as copyright, industrial designs, passing off at common law and unfair competition.
You will play a central role in the selection of new trade marks and will be responsible for advising on and achieving appropriate registrations. The task of the attorney is by no means completed once registration is obtained, however. It is part of your job to advise on the correct way to use trade marks in such areas as advertising and product literature, as well as to maintain registrations in force by dealing with renewal procedures. You will also advise on portfolio management in the light of the client's current needs, including expansion of protection, transfers of ownership, licenses, and other developments affecting the client's trade marks.
A vital aspect of your job is to advise on matters of trade mark infringement, whether it is your client who is accused of infringing another's rights, or where it is the client's rights which are being infringed. Potential conflicts are frequently resolved by means of letters of consent, co-existence agreements, undertakings as to future activities, and other compromise solutions. You are expected to provide constructive and commercially sensible advice and help in this area; as in other fields, litigation is always a last resort. If it cannot be avoided, it is your job to provide back-up to the solicitors and barristers conducting the case.
You must communicate effectively, both on paper and in person, with your clients and their other advisors, such as solicitors, barristers and advertising agents, as well as others acting for third parties, Registry officials and foreign associates. Travel to overseas countries is often involved, which provides an interesting additional dimension.
Who can become a trade mark attorney?
The minimum educational requirements to enter the profession are GCSE A, B or C grade in five approved subjects, and GCE A level in two approved subjects, or their equivalents. Candidates with certain degrees, such as law, may be eligible for exemption in some Foundation Papers of the qualifying examination (and it must be said, will usually find it easier to find a job as a trainee).
The profession offers a good career to those who wish to combine work of a specialised nature with a broad commercial background.
Where to Begin
You would most likely begin your career by joining a a firm of trade mark attorneys, or a firm of patent agents with a department specialising in trade mark work. Trade mark attorneys are also employed by large companies which have enough trade mark interests to need an in-house department to deal with their own matters. Whichever is chosen, positions of responsibility as well as intellectual satisfaction, with remuneration at least equal to that of other leading professions, are open to the qualified attorney.
The Register of Trade Mark Agents and the Institute of Trade Mark Attorneys
The vast majority of trade mark attorneys are registered under the Copyright, Designs and Patents Act 1988. Entry on the register grants certain rights of privilege to the attorney. Founded in 1934 as the Institute of Trade Mark Agents, ITMA was given joint responsibility under the Act for examination of candidates for entry on to, and for regulation of, the Register of Trade Mark Agents.
Under the regulations for the "Register Examinations" there are five Foundation Papers and two Advanced Papers which must be passed to gain entry on to the Register and to be considered for corporate membership of the Institute. These papers cover principles of United Kingdom and Overseas Trade Mark Law and Practice, Design Rights and Copyright Law and Basic English Law.
The Institute has six classes of membership: Associate, open to those with a working interest in the field, but who do not practice as trade mark attorneys; Overseas, open to those who practice outside of the United Kingdom; Student, open to trade mark assistants under training; and Affiliate, open to those with at least one year's experience and who have passed the Foundation Papers. The two classes of Corporate Membership are Ordinary Members, elected from those with at least two years experience and who have passed both the Foundation and the Advanced papers; and Fellows, being elected from among Ordinary Members of at least five years' standing who have advanced the interests of the Institute. Information on joining ITMA is available here.
Education and training of students is provided through the Institute by means of lectures and tutorials, which are additional to the basic on-the-job training provided by employers.
The Institute attempts to assist both employers and prospective entrants to the profession on the question of job vacancies where it can, but there is no central placement agency.
The Institute is always ready to provide information relating to careers in trade marks and general information on trade marks.
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