One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
How to become a trade mark attorney
An Australian trade mark attorney represents and advises clients regarding trade mark matters, such as trade mark searches, filing, registration, preparation of assignment documents, and enforcement in Australia and overseas, including international applications in target foreign markets and global applications through the Madrid protocol. Unlike patent applications, trade mark applications can be filed by anyone; however, registration as a trade mark attorney grants certain benefits, such as the right to be called a “trade mark attorney” or “trade mark agent” and conduct business as so.
Qualifications of a trade mark attorney
To become a registered trade mark attorney and be listed in the official Australian Register of Trade Mark Attorneys, the individual must possess several competencies in accordance to the standards set by the Professional Standards Board of Trade Mark and Patent Attorneys (hereafter referred to as the Board), who regulates registrations into the profession and provides disciplinary control. The requirements include the following:
To become a trade mark attorney, one must have:
- a Level 5 Australian Qualification Framework (AQF) qualification (Diploma level) or higher; or
- an overseas qualification that the Board deems equivalent to a Level 5 AQF qualification
While it is not a requirement, a degree in law may be beneficial in the practise of trade marks attorneys.
Knowledge on other forms of intellectual property, such as patents, copyright, design, trade practises, domain names, circuit layout, plant breeder’s rights, and confidential information are similarly advantageous.
The IP curriculum includes nine topic groups, but the following four course groups are sufficient to be eligible to practise as a trade mark attorney.
- Legal process and overview of intellectual property
- Professional conduct
- Trade marks law
- Trade marks practice
Knowledge requirements can be obtained by enrolling in accredited courses offered by several prescribed tertiary institutions or applying for exemptions to the Board on the basis of having previously taken the equivalents of these topics.
A trade mark attorney is tasked to function according to law and act in the best interest of their client. Thus, it is of utmost importance that trade mark attorney be
- of good fame, integrity, and character;
- not convicted for a prescribed offence for the last five years; and
- not sentenced to imprisonment for a prescribed offence.
Finally, the trade mark attorney should be an ordinary Australian citizen.
A person must have a spotless character, sufficient technical knowledge, and the complete educational requirements to be able to become an Australian trade mark attorney. Even so, the field is starting to become extremely competitive with applicants having identical or similar qualifications, so differences in experience and work environment may spell your success or failure in the field.