Litigators' rights

Registered trade mark attorneys and the courts - litigation and audience rights

Introduction

In effect, all registered trade mark attorneys (RTMAs) now have at least some rights to conduct litigation and appear in court on their client's behalf.

IPReg is the body responsible for granting litigation and audience rights to RTMAs. From 31 December 2012 IPReg introduced a new 3-tier system of qualification which was more closely aligned with the equivalent qualifications and training available to solicitors.  All previous rules and regulations can now be disregarded.

The relevant regulatory material and qualification/certification details can be found on IPReg’s website and include:

  • Rights to Conduct Litigation and Rights of Audience and Other Reserved Legal Activities Certification Rules 2012 which can be found here.
  • The Litigator’s Code of Conduct which can be found here.

Please always refer to IPReg and its website (www.ipreg.org.uk) for full details of attorneys’ litigation rights.

A summary of the litigation rights of RTMAs

In summary there are now three levels of qualification (please note this is not an exhaustive analysis of the rights granted and reference must also be made to the IPReg rules). They are as follows:

a) The Intellectual Property Litigation Certificate

This is the basic level of qualification which (with one or two exceptions) all RTMAs have been granted. It includes:

i) Rights to conduct appeals in the High Court from decisions of the UK IPO in prosecution/opposition/cancellation cases etc and to seek judicial review of such decisions in the High Court;

ii) The right to conduct IP litigation in the Intellectual Property Enterprise Court, or the County Court in defined cases;

iii) The right to conduct appeals in the above cases in the Court of Appeal and Supreme Court;

iv) A right of audience in the Intellectual Property Enterprise Court and, on appeals (but not judicial review) from UKIPO, in the High Court only.

This certificate was granted to all registered trade mark attorneys on the register as at 31 December 2012.

It is also granted to all RTMAs qualifying after 1 January 2013 via the full Nottingham Law School Professional Certificate in Trade Mark Practice.

b) Higher Courts Litigation Certificate

This is the equivalent of the previous qualifications awarded by CITMA and/or IPReg and the key feature is that it gives holders the ability to commence/conduct litigation in the High Court. It is only available to RTMAs who have completed additional training.

As well as the rights granted under the Intellectual Property Litigation Certificate, holders of this certificate also have:

i)  The right to conduct IP litigation in the High Court (and consequential appeals);

ii) Rights of audience in all County Courts handling IP matters and in procedural and interim hearings in the High Court.

c) Higher Courts Advocacy Certificate

This gives the holder full rights of audience/conduct in IP cases in all English Courts. It is equivalent to the combined rights of a barrister and solicitor in IP cases. It is only available to RTMAs who have completed an approved advocacy skills course or advocacy assessment.

It is important to note that none of these qualifications grants RTMAs the right to conduct or appear in cases before the Court of Justice of the European Union (including on appeal from OHIM), a state of affairs  which CITMA is actively campaigning to change.

The codes of conduct

All RTMAs exercising litigation rights in court or before UK IPO must observe IPReg’s “special rules of professional conduct applicable to regulated persons conducting litigation or exercising a right of audience before the courts” as well as the general “Rules Of Conduct For Patent Attorneys, Trade Mark Attorneys and Other Regulated Persons” (rule 14 of the latter is particularly relevant).

Continuing professional development

Holders of higher court advocacy certificates must undertake additional CPD, details of which can be found on IPReg’s website here.