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Attorney Privilege Faces Restriction

Issued: January 05 2017

A recent Federal Court decision in Australia has cast considerable uncertainty on the scope of protection for communications between both trademark attorneys and patent attorneys and their clients.


In Titan Enterprises v. Cross, the Federal Court of Australia found that not every service provided to a client by a registered trademark attorney falls within the scope of Section 229 privilege under the Trade Marks Act. In particular, the communications and documents, including the mere drafting of a statutory declaration or a submission for use in an arbitral proceeding before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre, do not attract such privilege.


Section 229 of the Trade Marks Act states that a communication made for the dominant purpose of a registered trademark attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a lawyer providing legal advice to a client.


The scope of intellectual property advice is limited to advice in relation to patents, trademarks, designs, plant breeder’s right or any related matters.


This case marked the first time this provision has been construed by a court.


The interlocutory proceeding concerns a claimed privilege attaching to documents produced under subpoena before the trial by Davies Collison Cave. In the principal proceeding, Titan alleges that a website called Beware of Titan Garages infringed its registered trademarks and copyrights and amounted to misleading or deceptive conduct. The applicant further alleged that Dale Cross, the first respondent who co-operated the website, is in fact a fictitious person.


Titan then issued a subpoena to Davies Collison Cave, which represented Cross in an earlier domain name dispute before the WIPO Arbitration and Mediation Centre, to produce records that could identify the name or contact details of the client. The firm initially produced redacted documents and contended that Titan is not entitled to inspect them in their unredacted form because they are subject to the privilege provided by Section 229.


Cross never responded to the claim, provided any instructions or made an affidavit concerning the privilege claim read by the firm.


Rebekah Gay, a partner at Herbert Smith Freehills in Sydney, believes that the court has taken a narrow view of the scope of the privilege and that the decision leaves unclear how strictly the court will limit privilege to the advisory aspect of client legal privilege in the future.


“For example, will documents generated by a trademark or patent attorney during the course of opposition proceedings, such as draft witness statements, attract privilege, given these are not strictly advisory services?” she says.


“The decision may encourage some clients to work with lawyers, or attorneys who are also qualified lawyers in some matters,” Gay adds. “It should also cause trademark and patent attorneys alike to exercise caution in terms of the scope of the services that are providing their clients. Attorneys who step beyond the boundaries of ‘intellectual property advice’ risk exposing their clients.”


Given that the court has reiterated that the onus lies on the person asserting the privilege to prove that it is applicable in a particular case, Gay suggests trademark and patent attorneys to be proactive in providing evidence to support their claims of privilege, including direct evidence from the client.


“It is clearly very important for trademark and patent attorneys to be able to communicate freely with their clients in relation to intellectual property matters, and the types of services that attorneys traditionally provide,” she says.


The scope of Section 229 was expanded in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 to protect communications between an attorney and third parties made for the dominant purpose of providing intellectual property advice to a client, in addition to client-attorney communications, and to apply equally to foreign trademark attorneys.


The amendment addressed the gaps in earlier provisions where privilege did not extend to communications between attorneys and third parties in circumstances where privilege would have the trademark or patent attorney were a lawyer.


Gay also said that, although further extension of the scope of privilege is unnecessary, there is room for clarification as to the scope of “advice” privilege afforded by Section 229. But this is most likely to come through further court decisions some time later rather than amendment to the legislation.


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