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In Europe, the trademark profession has always been split in half, and now that divide is widening. On one side are the agents, who register and prosecute trademark applications but are not trained lawyers. On the other side are the lawyers, who generally deal with more complicated issues and appear in court. Until recently, both sides have been happy with this arrangement, referring clients to one another and staying out of each other’s way. But increasing levels of competitiveness for IP work and the birth of the Community Trademark have put the relationship under pressure. More and more, British firms are offering prosecution services. Until 1997, Field Fisher Waterhouse, a London law firm, didn’t do prosecutions. In 2001, the firm ranked second for Community Trademark filings from the United Kingdom, according to the Institute of Trade Mark Attorneys (ITMA). Another law firm, Clifford Chance, placed third. In first place for trademark prosecution was a traditional agency, Marks & Clerk. According to Paul Walsh, a partner at London IP firm Bristows, the U.K. has seen a significant change in the way trademark services are offered. “A few years ago when looking at the law firms that were strong in IP you would ask ‘[which one] does filing work?’” he says. “Now you ask ‘[which one] doesn’t?’” Bristows has been doing prosecutions for 10 years, a long time for a law firm. “It makes us more credible as an all-round brands and trademark practice,” says partner Sally Field.Prosecution is an ongoing service, Walsh explains. Prosecutors tend to have a closer relationship with clients than litigators, who would previously only have been in touch when there was a dispute to solve. Some solicitors feel that agents are overstepping their boundaries in order to compete with the solicitors. John Olsen, a solicitor who heads the brands protection group of Field Fisher Waterhouse, is critical of the 1994 decision of the professional body representing British agents to change its name to the Institute of Trade Mark Attorneys. “They know that one of their biggest pools of work is [in] the U.S. and they know that lawyers in the U.S. are called attorneys.” Olsen points out that you don’t need a law degree to be a trademark attorney in the U.K. Instead, you need to pass a series of examinations set by ITMA. The exams qualify agents to register and prosecute patents, but not to do the more complex work of lawyers. Once qualified, agents are not required to take any classes or complete any additional training. However, Olsen says, today some agents are sending out cease-and-desist letters and negotiating settlements to contentious registrations. This is work “they are not trained to do,” he says. Brian Cordery, a solicitor at the London office of Bristows, notes that although agents cannot argue in court, they can assist the courtroom lawyers. And, he says, agents are increasingly doing more and more litigation-type work. “The two branches are becoming more and more similar,” Cordery says. John Slater, a past president of ITMA and the managing partner in the London office of Marks & Clerk, further disputes Olsen’s criticisms. Agents “are perfectly capable of handling the procedures at any trademark office,” he says. “The exams [the agents] take ensure that they have the skills they need.” Slater adds, “The good ones will always know when to call in other people.” Slater also dismisses the claim that the term “attorney” is misleading: “I don’t think anyone has ever been comfortable with the term ‘agent’ — it does not have the status people would like. … Using the term allows us to project ourselves as trademark experts, which is what we are.” But Slater acknowledges that the market is changing. “Traditionally there were friendly relations with solicitors and both sides referred work to each other. That rapport has now broken down.” Although U.K. Law Society rules prevent lawyers from being in partnership with nonlawyers, that did not stop Marks & Clerk from setting up Blair & Co, an independent firm of solicitors, two years ago. It is an option, however, that Slater concedes is open to few. “We are extremely large, with 60 partners and offices all over the world. It would be much harder for other firms of attorneys to do.” Such developments are not confined to Britain. For many years Bardehle Pagenberg was unusual in Germany as a full-service IP firm. Germany is one of the few European countries without rules forbidding lawyers and nonlawyers working together in a single partnership. Bardehle Pagenberg partner Claus Eckhartt reports the firm is no longer alone. “The bigger agencies are hiring lawyers and are becoming law firms as well as prosecution practices,” he says. “And large law firms are moving into the prosecution market.” This is especially the case with U.S. and U.K. outfits that are establishing presences in Germany. “IP is not their primary focus, but they are interested in rounding off their businesses. They say they have to be able to offer trademark filing in order to provide a comprehensive service to their clients,” Eckhartt says. Lovells Boesebeck Droste, for example, formed from a merger between British solicitors Lovells and Germany’s Boesebeck Droste. Droste had always had a strong trademarks reputation in Germany. The office it established in Alicante, Spain before the merger now handles Community Trademark registration work for Lovell’s clients internationally. Lovells is not alone. Gide, the largest independent French law firm, opened up a filing practice at the beginning of 2001, and international firms such as Baker & McKenzie and Clifford Chance are offering filing services to their clients. “I think it is a legitimate question to ask whether the trademark agent profession as such will survive,” says Milan Chromecek, Lovell’s head of IP in Paris.

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