We first wrote about trade mark attorney privilege and the changes to the Trade Marks Act 1995 (Cth) as a result of the Raising the Bar legislation here and, more recently in relation to Titan Enterprises (Qld) Pty Ltd v Cross  FCA 1241 (Titan Garages case), here.
Since our most recent blog on the Justice Logan’s judgment in Titan Garages, I have had recent cause to consider the practical ramifications for trade marks attorneys of the decision for their practices.
Trade mark attorneys have been critical with some of Justice Logan’s comments, including at  that “it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s.229(3). And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights did or did not extend to an Internet domain name seem to fall within the ambit of s.229 privilege either by virtue of paragraph (b) or (e) of the s.229(3) definition. But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s.229 privilege. Likewise, advice as to what submission ought to be made to demonstrate that the asserted trade mark right did or did not extend to cover the domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission for use in an arbitral proceeding would not. However this may be, the present claim must be determined solely by reference to the scope of the privilege as presently enunciated by Parliament” [my emphasis added].
Trade mark attorneys have been critical because of where it leaves them, particularly in light of the fact that it is within the scope of a trade mark attorney’s practice to act in the WIPO Arbitration and Mediation Center (WIPO AMC) in relation to domain name disputes. When assessing the validity of trade mark attorneys’ concerns, it is important to bear in mind that WIPO AMC is not a court and the matters within that forum relate to trade marks and the rules of the forum allow representatives to act on behalf of parties. Further, domain name policy and dispute resolution are well known to trade mark attorneys generally and we understand that that it has featured prominently in mandatory university courses for students seeking registration as trade mark attorneys.
In addition to that, trade mark attorneys act in trade mark prosecutions and appear in contested hearings such as oppositions before Trade Marks Examiners in the Australian Trade Mark Office.
Therefore, when one considers Justice Logan’s comments at  it would appear that he adopts a very strict interpretation of how s.229 should be read in its practical application.
In light of a trade marks attorney’s training and usual professional activities, it seems implicit that when a trade marks attorney sits down and considers the evidence of both parties and drafts a statutory declaration and/or a submission for use in a domain name dispute concerning a trade mark, the attorney’s drafting would involve “intellectual property advice” as set out in s.229(3). However, if the trade marks attorney’s client (for whatever reason) simply dictated their own statutory declaration and their own submissions to the trade marks attorney and the attorney then simply put them into a form for it to be lodged, then those documents are unlikely to attract privilege.
Nevertheless, Justice Logan’s decision did not descend quite to this level of practical detail. I do not expect that the legislation needs to be amended to clarify this. However, I do expect that future cases will potentially deal with this aspect in more detail. The fact that Mr Cross in the Titan Garages case (if he existed) did not swear an affidavit in support of the claim for privilege and neither he, nor his attorneys Davies Collison Cave, appeared at the hearing before Justice Logan probably resulted in less legal argument being ventilated on this issue than would otherwise be expected in a contested hearing.
Where the decision leaves trade marks attorneys is that they should warn their clients that it is possible that if subpoenaed, their draft submissions and draft statutory declarations may need to be disclosed and produced to the court if any argument to the contrary is unsuccessful.
It may also be useful evidence for trade mark attorneys to use headings on draft documents such as “privileged – this document contains intellectual property advice” (provided the trade marks attorney did not simply format a document provided to them by a client, or type these documents after a dictation by the clients). However, this in itself does not guarantee the claim for privilege will be successfully maintained if challenged in Court.
Of course, the safest alternative approach is for the trade mark attorney to provide the intellectual property advice, but for a solicitor to then draft the statutory declarations and submissions.
Special thanks to Matthew Hammon, Trade Marks Attorney, who provided me with insight into a trade mark attorneys practice (compared to that of a solicitor).