A recent Federal Court decision has raised questions regarding the scope of Trade Mark attorney privilege in Australia.

Section 229 of the Trade Marks Act 1995 states that a communication, or a record or document, made for the dominant purpose of a registered trade mark attorney providing “intellectual property advice” to a client is privileged in the same way, and to the same extent, if it were made by a lawyer. Section 229 defines “intellectual property advice” to mean advice in relation to patents, trade marks, designs, plant breeder’s rights or any related matters.

In the recent Federal Court decision of Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241, Logan J found that not every service provided to a client by a registered trade mark attorney will fall within the scope of section 229. In the context of arbitral proceedings before the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre, Logan J held that the following services by a trade mark attorney would not constitute “intellectual property advice”:

  • (a) the drafting of a statutory declaration in connection with a UDRP complaint; and
  • (b) the drafting of a submission for use in an arbitral proceeding.

His Honour also considered that privilege under section 229 was conferred only in relation to advisory aspects of a trade mark attorney’s services, and would not extend to proceedings in a Court.

The facts of the case are somewhat peculiar. Whilst the trade mark attorney firm claimed privilege in a draft statutory declaration prepared in connection with a UDRP complaint, their client did not provide instructions on the question of privilege, did not file any affidavit in support of that claim and did not otherwise appear (or instruct solicitors to appear) at the hearing. This may have had an impact on the Court’s decision.

Notwithstanding the peculiar circumstances of the case (and its context in a URDP complaint), it is important for trade mark attorneys to review and consider the decision, a full copy which can be accessed here.