TRADE MARK ATTORNEY application withdrawn

The IPKat's eagle-eyed friend Philip Cooper (Crossguard) has pointed out that the application of the Institute of Trade Mark Attorneys to register the words TRADE MARK ATTORNEY as a certification mark for services in Class 42 ("Professional, legal and research services relating to industrial and intellectual property; name creation services; searching services; trade mark and design filing and prosecution services; advisory and consultancy services in the field of industrial and intellectual property; maintenance and renewal services; trade mark watch services; trade mark and design services") has been withdrawn (you can read the application's history here). The application was already labouring under a heavy disclaimer that

"1. This certification mark shall not prevent a person who is entered on the list of professional representatives before the Office of Harmonisation in the Internal Market (OHIM) in pursuance of the Community Trade Mark from using the title "European Trade Mark Attorney".

2. Nothing in these regulations shall prevent the use of the title "Trade Mark Attorney" by any person who is a registered trade mark agent".

Adds Philip,

"It would have been helpful, I think, to those of us who are qualified if ITMA had succeeded in registering the title TRADE MARK ATTORNEY as a certification mark – as it stands at present there seems to be no specific prohibition on anyone being able to use this, and being able to use the protected title REGISTERED TRADE MARK ATTORNEY is not an effective substitute.

This is unlike the situation with other professions, as you can’t use the simple titles “Dentist” or “Solicitor” or even “Patent Attorney” without it being an offence".

The IPKat considers that, while it is entirely proper for a responsible professional institution such as ITMA to play an active role in policing the use of terms that suggest professional expertise or qualifications by people who lack them, it seems wrong to leave the fate of a term such as "trade mark attorney" to the vagaries of the trade mark system rather than legislating for them up front. Merpel says, if all else fails, ITMA may as well try registering the words as a Community design: "trade mark attorney" is no less a protectable design than some of the other stuff that's sitting on the register ...