Partner in a small private practice
Duncan - Trade mark attorney, partner in a private practice firm
Duncan has been a trade mark attorney for 19 years. He started out by completing a business law degree at Central London Polytechnic (now known as London Metropolitan University). He particularly enjoyed the intellectual property element of the course, so when he saw a position advertised in the trade mark department of ICI he decided to apply. He briefly considered becoming a solicitor, but felt that the strong intellectual property element of being a trade mark attorney would suit his interests better.
Duncan stayed at ICI for three-and-a-half years before moving into private practice. He felt that working in-house provided excellent training, mainly because he was given greater responsibility early on and greater exposure to the issues involved in being a trade mark attorney.
Duncan, along with his business partner, have just set up their own private practice, Joshi & Welch, which is a two-partner firm dealing with all aspects of a trade mark practice. This involves the preparation and clearance of trade marks, registration, general enforcement and dealing with counterfeit claims. Day to day Duncan spends his time by writing to clients and third parties, advising clients over the telephone, researching the elements of trade mark registration and drafting all kinds of papers, such as oppositions.
Although Duncan is based in London he does a lot of his work with clients and official bodies all over the world. The majority of his clients will be looking to have their trade marks registered and dealt with by ITMA and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (European Community Trade Marks Office (OHIM)), which is based in Alicante in Spain. There is, however, a significant number of his clients who will also need to have registrations undertaken in countries all over the world as trade mark rights are territorial. Duncan has to have a strong understanding of laws in individual countries and international agreements affecting trade marks. He therefore believes that languages are a definite advantage, although the majority of business will be carried out in English.
In addition to language skills, Duncan believes that the skills he acquired on his undergraduate law degree have greatly helped him in working as a trade mark attorney. He feels that attention to detail, good drafting skills and an ability to interpret legislation are particularly important. A basic understanding in some core law subjects has also helped him, particularly company law, jurisprudence and litigation. Duncan says, 'An understanding of the workings of litigation is very important, as a significant part of the job involves advising clients how to avoid it or how to tackle it should an infringement of their registered mark occur. Knowledge of criminal law can also be useful when dealing with counterfeit claims.'
Duncan really enjoys his job. He likes the great variety involved in the role and also the range of clients he deals with, from individuals to large corporations. 'Although it is predominantly a commercial environment it is also very human, as client contact is significant and you are advising on and helping to create something that can be seen all around you. All the time you are dealing with something new.'
In the 19 years that Duncan has been in the profession he has seen it become more regulated with official training structures now in place. It is a much more distinct role than it used to be, certainly more removed from patent attorneys, although some experienced trade mark attorneys are dual qualified. Within the profession he has also seen further specialisms emerging, either in subject areas such as pharmaceuticals or in an area of practice such as counterfeits and enforcement of rights.
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