A Trade Mark Attorney’s professional conduct is regulated by the Intellectual Property Regulation Broad (IPReg), who have put in place a set of 22 rules, known as the Code of Conduct. It is worth noting that while IPReg provide a regulatory function for the TM Attorney profession, it is the Chartered Institute of TM Attorneys (CITMA) that conducts all representative functions at an institutional level.

The 22 Rules

Rules 1 and 2 identify the interpretation and scope of the rules as a whole, while Rule 3 clarifies the requirements around service of documents. 

Rule 4 goes into competence and the idea that the attorney should not act beyond what is in his or hers expertise. They should acknowledge their own skills and limitations, exercise their permission to say ‘no’ in handling an assignment, resort to the expertise of other colleagues and rely on further resources. For example, a Trade Mark Attorney can only act in matters relating to intellectual property rights. However issues around patents would likely require additional support from a Patent Attorney, and so might the conduct of litigation or advocacy in court proceedings where needed might be the expertise of a solicitor or a barrister, if the Trade Mark Attorney does not have litigation certification, or is not supervised by someone who has such certification.

Rule 5 emphasises integrity, an adherence to ethical standards. For example, an expectation to practice “competently, promptly, conscientiously, courteously, honestly and objectively, avoiding unnecessary expense to the client”, as well as avoiding any conduct that might jeopardise his or her independence. It is essentially employing a professional integrity that places the client’s interests first.

Rule 6 addresses client care and service and appears as an extension of Rule 5, where a regulated practitioner must inform, explain and timely update the client in a manner that is coherent, allowing the client to make an informed decision. This includes transparency as to options, advice, expenditure and timelines, including co-operation if the client wishes to opt for a change of representative, or not to withhold correspondence until the attorney’s fees are met, as the latter would constitute the attorney putting their own interest in fees before the interest of the client. 

Rule 7 raises the position around conflicts of interest. As a matter of practice an attorney is required to conduct a conflict check within their firm when taking on a new client. This aims to protect all parties involved in ensuring that relevant knowledge from one case does not compromise another, as issues of confidentiality might be raised. The conflict check includes not only current or a former clients, but also partners or other staff in the firm. Although in some circumstances a conflict could be managed, an attorney under no circumstances can act for an opposing party in a contentious matter.

Rule 8 carries on from Rule 7 by extending the consideration to confidentiality and disclosure. The attorney owes a duty to current and former clients to keep their affairs confidential and not to place themselves in a position that might in any way jeopardise that. In due course, information can cease being confidential by becoming public knowledge or where its disclosure is consented to by the client. They also owe the client a duty to disclose to them all relevant information about their case.

Rule 9 outlines duties associated with the attorney’s relationships with other professionals. Unless exceptional circumstances apply, an attorney has a duty not to contact the other side in a dispute directly where they have appointed a legal representative, as well as a duty to assist a new legal representative appointed by the client to take their case forward. 

Rule 10 concerns professional fees, in that they must be justified, while Rule 11 addresses financial matters and the option of ‘payment on account’, ensuring that the client’s money when paid in advance are held on trust for the client in a separate from the attorney’s or the firm’s business accounts. 

Rule 12 accounts for complaints handling and making the client aware of the steps they can take in filing a complaint with the Legal Ombudsman. On the flip side, Rule 13 tackles the position around liens. The attorney should address in their terms of business, at the outset, the position around unpaid fees and whether it is justifiable to withhold or delay transfer of files where there are outstanding fees. In the absence of such an agreement, the attorney should not unreasonably delay effecting the transfer of documents. 

Rule 13 uphold the duty to act in the interest of justice. The attorney is required to act with independence; to not submit statements of fact, contentions or allegation without material evidence; to not rehearse a witness as to the evidence they would give; and in formal proceedings, to bring forth to the Court any procedural irregularities. 

Rule 15 requires an anti-discrimination practice by the attorney. 

Rule 16, on the other hand, requires the attorney to maintain a practice where there is continuing professional development.

Rule 17 focuses on professional indemnity insurance (PII) where a practitioner must have an insurance policy in place to cover risks associated with their practice. 

Rule 18 stipulates that activities relating to publicity by the attorney, or their firm, are permitted so long as the publicity is “fair, honest, accurate and is not misleading and is not otherwise in breach of [the] Rules”.

Rules 19 to 22 deal with the application of the Rules, namely and in respective order, provision of information to regulation boards, co-operation, avoidance of regulatory conflict (e.g. if there is conflicting provisions by different regulation boards), and commencement date of the rules. The rules in their current form apply from 1 January 2015.

Closing Thoughts

The principles behind the rules are based on ethics relating to a reliable professional standard and expertise. The purpose being to demonstrate, justify and sanction conduct as necessary, as well as to protect clients and practitioners alike.Although these rules are currently under review, their underlying purpose is here to stay.