The decision of Logan J in Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241, places potentially significant limitations on the extent of Trade Mark attorney privilege.

Client legal privilege applies to communications made in connection with giving or obtaining legal advice or the provision of legal services, including representation in proceedings in a court. However attorney privilege applies only in relation to the advisory aspect of client legal privilege and then only to the extent that the advice constitutes “intellectual property advice” as defined. According to the Court in Titan Enterprises:

Not every service provided to a client by a registered trade marks attorney falls within the scope of s 229 privilege. In particular, advice constituting “intellectual property advice” as defined aside, the communications or documents generated in the course of the provision by a registered trade marks attorney of services in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre do not attract s 229 privilege. Nor, subject to that same caveat, would services provided to a client by a registered trade marks attorney in relation to proceedings in a court attract s 229 privilege.

In the context of a WIPO domain name dispute it was said 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 a 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.

While the decision was made in the context of the Trade Marks Act 1995, the grant of privilege under that Patents Act 1990 is worded similarly. Client’s being unable to claim privilege in drafts of evidence or submissions prepared by attorneys for opposition proceedings would be a substantial change to IP practice in Australia.