20 May 2024NewsTrademarksBaron Armah-Kwantreng

INTA 2024:Trademark lawyers—Staying ethical and out of jail

Ethics are vital for trademark lawyers, but depending on where you are, the precise rules can differ significantly, finds Baron Armah Kwantreng.

Getting on the wrong side of ethics on trademark issues can end up with an attorney facing sanctions, or worse—jail.

A panel of five lawyers addressed the tricky issue of trademark lawyers and ethics at the International Trademark Association (INTA) Annual Meeting, on Sunday, May 19, exploring the different definitions of unethical behaviour depending on where you practise.

Asking questions of her panel, chair Catherine Farrelly, chair of the trademark and brand management group at US firm Frankfurt Kurnit Klein & Selz, uncovered the sanctions lawyers in the US, UK, Latin America and China would face for an ethical breach.

Farrelly asked the panellists: “What do you do if a trademark clearance search identifies a pre-existing trademark for another client?”

Starting points

Kate Swaine, co-head of IP, Global, at Gowling WLG in London, said: “There are two key issues in the UK. One, we cannot advise against the interests of a client, even when advising another client. Secondly, we cannot draw on information that compromises the confidentiality of another client.”

Ricardo Alberto Antequera, managing partner of Venezuelan law firm Antequera Parilli & Rodriguez, said a starting point is identifying if there is a formal relationship with the existing client.

“Most countries in Latin America need a letter of engagement and a power of attorney to create a formal client relationship. If there is only a limited power of attorney there shouldn’t be a conflict of interest.”

Antequera advised: “If you determine they are a client, then you should disclose this to the first client and step aside.”

Austin Chang, counsel at Chinese law firm, Beijing East IP, agrees with this approach. “We look at the similarity between the marks, and if they are dissimilar we continue. But we keep in mind potential conflicts.”

Waiver issues

Tyler Maulsby, a partner at Frankfurt Kurnit Klein & Selz, who is a leading authority on legal ethics, quoted the American Bar Association’s model rules for resolving attorney-client conflict. “You cannot take on a matter that is adverse to a current client, unless you can get a waiver. If it is a former client then you cannot use their confidential information.”

Maulsby said he would defer to Farrelly as a trademarks lawyer for specifics to decide on asking for a waiver. Farrelly replied: “I would never ask for a waiver because I wouldn’t want to disclose to my client that I was assisting a competitor. So I would tell the new client I couldn’t help.”

Farrelly then asked the panel how to resolve the fiduciary duties to a client who refuses to pay its bills or is uncontactable.

Swaine said: “In the UK registered trademark and patent attorneys’ rules of conduct are that they should make reasonable efforts to maintain the client’s interests. There is no mention of payment or outstanding bills.”

Swaine said the best defence is to write the rules of engagement in the instruction letter and ask the client to sign it. “That puts you in a much stronger position,” he said.

Antequera noted that this is an issue experienced partners need to educate junior lawyers on. “This is a conversation within the firm. You have to be smart, and to have the terms and conditions adhered to. Otherwise you can be held to continue to represent the client. Even if you withdraw the power of attorney, you still have to give the client time to find a new attorney.”

Chang added: In extreme situations where the client would not respond to messages. We’ve sent a LinkedIn message to the client and that got a response.”

Maulsby said this is a big issue for law firms. “I can tell you a lot of law firms spend a lot of time and money trying to get out of relationships with clients.”

An evidence trail

But he adds that law firms in the US need to adhere to set deadlines and provide substantial reasons for terminating client relationships. “If the client is before a tribunal you need permission from the judge.”

Maulsby suggests creating an evidence trail. “The biggest takeaway is to document everything you are doing with clients. One in 100 clients will say: 'We don’t know what you are talking about,' when you challenge them. So document your emails and calls so you can show them later.”

A question from the audience touched upon the ethical issues of trademark lawyers using external investigators who may use impersonation and other practices to get their results.

Maulsby mentioned a counterfeiting case where the other side alleged the law firm violated ethical rules by using a private investigator: “A lawyer cannot engage in fraud or deceit, the penalties for which can be jail or other sanctions.

“A lawyer can supervise someone else doing that to advance a societal good, such as the vindication of a trademark right. But the action of the investigator has to be lawful, such as no use of threats or intimidation.”

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