A recent decision on the scope of trade mark attorney privilege (TMAP) confirms that the privilege afforded to TM attorneys is not as broad (theoretically, at least) as legal professional privilege.
The decision is here: Titan Enterprises (Qld) Pty Ltd v Cross  FCA 1275.
I know, privilege, right? Don't get too excited. I'll make it as painless as possible. Trust me.
OK - so here are the facts:
The Respondent (it was alleged) operated a website called BEWARE OF TITAN GARAGES which purported to catalogue a series of bad customer experiences with a business called Titan Garages and Sheds.
Titan was unhappy about the website and initially sought to wrest the offending domain name (bewareoftitangarages.com – no longer active) from the Respondent via the WIPO domain name dispute process. That was unsuccessful and Titan subsequently issued proceedings in the Federal Court of Australia alleging trade mark infringement and breach of the Australian Consumer Law, among other things.
In the course of the FCA proceeding, a subpoena was issued to the firm of trade mark attorneys which had represented the Respondent in the WIPO proceeding. The subpoena sought, among other things, all records of instruction given by the Respondent or any other person, in that proceeding.
It should be noted that this case was unusual in that the Respondent did not appear in the FCA proceeding and could not be found. Part of the reason for the subpoena was to identify the Respondent and to determine the extent to which a second respondent had been involved in the development and promotion of the website.
The documents were produced to the Court but inspection by the Applicants was objected to (by the TM attorneys on behalf of their former client whom they were unable to contact) on the grounds that much of the content was subject to trade mark attorney privilege.
That objection was dismissed and full access to the unredacted documents was granted to the Applicants.
To understand the reasons for this decision, here’s a short refresher on legal professional privilege (a.k.a. client legal privilege):
LEGAL PROFESSIONAL PRIVILEGE
Legal professional privilege prevents unauthorised disclosure of certain confidential communications between the client and the legal adviser. The privilege has two limbs:
(1) Legal Advice Privilege
“Legal advice privilege” protects communications between the client and his or her legal adviser made for the dominant purpose of enabling the client to obtain, or the adviser to give, legal advice.
It protects oral or written communications between client and legal adviser (or real evidence – e.g. surveillance film) and documents prepared, which are confidential, and created for the dominant purpose of seeking or providing legal advice.
So, for example, it protects:
- Requests for legal advice
- Communications of legal advice
- Documents prepared for the purpose of providing legal advice (including, in some circumstance, documents prepared by third-parties)
BUT it does not protect:
- Documents that evidence transactions – e.g. contracts, conveyances, assignments
- Trust account ledgers
- Memoranda of fees
- Records of time such as timesheets, fee records
- Costs agreements
- Appointment records
- Documents delivered to the solicitor which were not created for the dominant purpose of obtaining legal advice
- Name of the client
- Address of the client
(2) Litigation privilege
“Litigation privilege” extends the protection to certain communications passing between the legal adviser or the client and third parties in relation to litigation that is actually taking place or was in the contemplation of the client, and is not restricted to communications made for the purpose of obtaining legal advice.
It is restricted to documents concerning proceedings in a court of law. The privilege “operates to secure a fair civil or criminal trial within our adversarial system of justice”: AWB Ltd v Cole (2006) 232 ALR 743 at  per Young J. In Grant v Downs (1976) 135 CLR 674, Stephen Mason and Murphy JJ noted that there are “powerful considerations which suggest that [litigation privilege] should be confined within strict limits.” (at 685).
Litigation privilege only applies to judicial or quasi-judicial proceedings. It does not extend, for example, to commissions of inquiry. Nor does it extend to matters before the Administrative Appeals Tribunal: Ingot Capital Investments Pty Ltd v Macquarie Equity Capital Markets Ltd (2006) 67 NSWLR 91. See also Three Rivers District Council v Bank of England (No 6)  1 AC 610. (Though there is some conflicting authority on this).
The question as to whether litigation privilege extends to matters before the WIPO Arbitration and Mediation Center had not been judicially considered but it would seem very unlikely that it does.
Similarly, it seems unlikely that litigation privilege would extend to matters before the Trade Marks Office or the Patents Office.
TRADE MARK ATTORNEY PRIVILEGE
Unlike LPP, TMAP does not exist at common law. It is created by s 229 of the Trade Marks Act 1995 (Cth) and is expressly confined to communications between trade mark attorneys and their clients in the course of providing “intellectual property advice”.
“Intellectual property advice” is defined in s 229 as being advice in relation to patents, trade marks, designs, plant breeder’s rights or any related matters.
So, TMAP only extends to the equivalent of the advice arm of legal professional privilege. The statute does not confer any privilege that is equivalent to litigation privilege – and if you’re not sure that that’s really what parliament intended, you only need to look at the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising The Bar) Bill 2011 which made some changes to the privilege afforded to patent attorneys and trade mark attorneys. It stated:
“it is inappropriate to extend attorney-client privilege to include ‘litigation’ privilege: this should be the sole preserve of lawyers”.
While there have been several decisions concerning the scope of patent attorney privilege (which, like TMAP, is wholly a creature of statute), trade mark attorney privilege per se had not been judicially considered prior to the Titan decision.
Justice Logan made the following comments about the scope of TMAP which, in light of the above review of the law, are not controversial:
- TMAP is not equivalent to legal professional privilege because “the assimilation is only with the advisory aspect of client legal privilege and then only to the extent that the advice constitutes “intellectual property advice” as defined.”
- “Not every service provided to a client by a registered trade marks attorney falls within the scope of s 229 privilege.
- “IN PARTICULAR – advice constituting “intellectual property advice” as defined aside, the communications or documents generated in the course of the provision by a registered trade marks attorney of services in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre do not attract s 229 privilege.”
- “NOR, subject to the same caveat, would services provided to a client by a registered trade marks attorney in relation to proceedings in a court attract s 229 privilege.”
The point is not to miss the caveat. Communications constituting intellectual property advice are covered – so are documents created for that purpose.
Justice Logan accepted that his construction of s 229 might not reflect current practice but said:
“it is for Parliament, not the courts, to make a value judgment as to whether the scope of s 229 privilege ought to be extended”
He also acknowledged that it may sometimes be difficult to determine whether a particular communication is for the purposes of providing intellectual property advice or not – for example:
“it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s 229(3).“
And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights extended to an Internet domain name – either by virtue of paragraph (b) or (e) of the s 229(3) definition.
But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege.
Likewise, advice as to what submission ought to be made to demonstrate that a trade mark right extended to a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission (for example on express instructions and without any element of advice from the TM attorney) would not.
The comments of the Court require careful consideration by trade mark and patent attorneys – not because they change the law but because they emphasise a fact that is easily forgotton: attorney privilege is not equivalent to legal professional privilege because it has no “litigation privilege” arm.
Importantly, to the extent that privilege may wish to be asserted over particular communications, it is essential that those communications are framed as intellectual property advice. The mere taking of witness statements, filing of documents, preparation of evidence will not be privileged unless it constitutes communications for the purpose of giving or receiving intellectual property advice.
The judgment leaves open the question of whether communications between trade mark attorneys (and patent attorneys) and third parties – including experts – are privileged. On the basis of the comments of Justice Logan and the Explanatory Memorandum, one would tend to conclude that they are not.
Ratio for Logan J’s decision
Finally, it is important to understand the ratio for Logan J’s conclusion that inspection of the unredacted documents should be permitted.
The reason for his decision was that the affidavit material filed by the Respondents was insufficiently focussed and specific to support a claim of privilege. That’s it. Nothing further. There is nothing controversial about that finding at all. It is well-established that if affidavit evidence in support of a claim of privilege does not rise above mere assertion, it will be insufficient to establish the claim.
And, I should add, there were unusual aspects of this case that help to explain why the affidavit evidence was insufficient. In particular, the trade mark attorney firm was unable to contact the Respondent (their former client) in order to obtain instructions from him as to whether the claim for privilege was maintained.
Disclaimer: the author was junior counsel for Titan in the proceeding before Logan J.
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