A recent Federal Court judgment1 in respect of an interlocutory dispute over access to documents produced under subpoena has cast the first rays of judicial light on a relatively recent statutory provision protecting client-trade marks attorney privilege.
The judgment in Titan Enterprises (Qld) Pty Ltd v Cross  FCA 1241 (Titan v Cross) indicates that, although client-trade marks attorney privilege offers reliable statutory protection in respect of intellectual property (IP) advice, it is not identical to and will not protect the same breadth of communications as client legal privilege. In particular, unlike client legal privilege, client-trade marks attorney privilege will not extend to communications in respect of IP litigation.
Background to the interlocutory application
The interlocutory application arose from a dispute between the applicants (Titan Enterprises) and the respondents Dale Cross and Dr Adam Harmon (collectively, Cross and Harmon) in relation to, amongst other things, the contents of a website entitled “BEWARE OF TITAN GARAGES” (Website) which is no longer online, but alleged by Titan Enterprises to have been operated by Cross and Harmon. Titan Enterprise alleged that the contents of the Website constituted an infringement of its registered trade marks, copyright and was in contravention of sections 18 and 29 of the Australian Consumer Law (ACL), and committed the tort of injurious falsehood.
In the interlocutory application before Logan J of the Federal Court, Titan Enterprises sought access to documents produced under subpoena by a third party, trade marks attorney firm Davies Collison Cave (DCC). The access to the documents produced by DCC was opposed by Cross and Harmon on the basis that the documents were protected by client-trade marks attorney privilege under section 229 of the Trade Marks Act 1995 (Cth) (Act). The subpoena in question sought the production of a number of documents including, but not limited to, the following:
- Records of instruction (with redaction of information protected by client legal privilege) from Mr Cross to DCC concerning Mr Cross’s domain name dispute with Titan Enterprise before the WIPO Arbitration and Mediation Centre (Titan Dispute);
- Documents recording the levying of payment of professional fees in relation to the Titan Dispute;
- All documents identifying or recording steps taken to identify or confirm the identity of the person providing instructions in relation to the Titan Dispute.
DCC had acted for Mr Cross in the Titan Dispute giving rise to protection of the documents on the basis of client-trade marks attorney privilege under section 229 of the Act.
Consideration of S229 Client Trade Marks Attorney Privilege
In his consideration of whether or not s229 of the Act would protect access to the documents produced under subpoena, Logan J noted that there did not appear to be any prior judicial consideration of s229. Accordingly, this consideration of s229 would appear to be the first.
Logan J proceeded to note that neither the Act nor the Trade Marks Regulations 1995 (Cth) (Regulations) prescribed a specific practice or procedure for s229, leaving it open for determination in accordance with the broader principles established in privilege cases. Thus, as with client legal privilege, the onus to prove that the protections of client-trade marks attorney privilege apply will be on the person seeking to rely on the privilege and the proof must be more than “sworn assertion”2.
The relationship between s229 and client legal privilege was then considered. Logan J highlighted that whilst client legal privilege is sourced in the purposes of protecting communications in connection with giving or obtaining legal advice and representation in proceedings in court3, the text of s229 discloses that “there is not a complete assimilation of s229 privilege and client legal privilege”.4 Unlike client legal privilege, s229 privilege is restricted to the advisory aspect of client legal privilege and even then the type of advice that is protected is “intellectual property advice” as defined in the section.
Citing the explanatory memorandum of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) which inserted the present s229 into the Act, Logan J pointed out the express parliamentary intent for the restriction of s229: “Attorneys do not have the same rights as lawyers do to initiate proceedings and represent parties in court”.5 In light of this intention, it is beyond the courts to make value judgments as to whether or not the scope of s229 should be extended.
In relation to the subpoena, Logan J held that while the Titan Dispute (being an internet domain name dispute) would fall within the definition of “intellectual property advice” in s229(3), the mere drafting of a statutory declaration for use in an arbitral proceedings (as opposed to advice about the contents of the statutory declaration in relation to such proceedings) would not fall within the definition of intellectual property advice.
The decision provides a useful interpretation of the scope of client-trade marks attorney privilege under s229 of the Act. In particular, the decision confirms the distinct and considerably narrower protection of s229 in comparison with client-legal privilege. The distinctions drawn by Logan J between the conduct and advice on the prospects of arbitral proceedings as well as the demarcation between IP advice and IP litigation in relation to s229 are particularly informative. In light of these observations, trade marks attorneys and their clients should be conscious when communicating sensitive information to ensure that the matter in respect of which the communication is made is an advisory matter, and not a contentious one. When dealing with contentious IP matters ensuring that communications beyond IP advice are made to an IP lawyer would be a prudent precaution to take.
1Titan Enterprises (Qld) Pty Ltd v Cross  FCA 1241(Titan v Cross).
2Hancock v Rinehart  NSWSC 12 at  per Brereton J.
3Esso Australia v FCT(199) 201 CLR 49.
4Titan v Cross at para  (Logan J).
5Titan v Cross at para  (Logan J).