(originally published in the ITMA Review, July 2004)

As of March 2003, there were 891 professionals entered on the register of trade mark agents.[1] Based on the qualifications appearing in the register and by comparing the entries with the membership lists of CIPA and ITMA, it is possible to establish that all but 24 of these trade mark attorneys are members of CIPA or ITMA. Of the remaining 24, 7 are shown in the register as being qualified as solicitors and 1 is shown as a barrister. No information is given for the qualifications of the remaining 16 registered trade mark attorneys. As CIPA and ITMA members account for 97.3% of the trade mark attorneys in the United Kingdom, this article examines the picture they paint of the modern British trade mark profession.

Demographics

Chart 1 illustrates the demographic profile of the trade mark profession as represented by CIPA and ITMA members. In the chart, the year of qualification is taken to be the earliest of either: the year of admission as a fellow of CIPA, the year of passing the ITMA final exams or the year of admission as a fellow or member of ITMA. 50 individuals who the latest membership lists suggest are no longer in active practice have not been included. These 50 have either allowed their membership of CIPA or ITMA to lapse or have retired and have compounded their CIPA membership.

Chart 1

Chart 1 shows that between 1970 and 1990 the number of individuals joining the trade mark profession each year who eventually qualified as trade mark attorneys has varied from a low of 7 in 1981 to a high of 34 in 1979. The average number of new recruits each year throughout that period, however, remained relatively flat with on average just over 20 individuals a year joining the profession between 1970 and 1990. The numbers entering the profession prior to 1970 who are still in active practice are even lower. Together these figures suggest that unlike the patent profession, the trade mark profession does not appear to be heading for an imminent demographic crunch as large numbers of professionals reach retirement age.[2]

In more recent years the number of individuals actually qualifying as trade mark attorneys has varied considerably. Annual numbers reached a high of 74 in 1993, arising from a combination of a final surge of patent attorneys qualifying as trade mark attorneys under the grandfather provisions and record numbers of individuals passing the JEB exams that year. In contrast, in 1998 and 1999 only 11 and then 10 new trade mark attorneys passed the JEB final exams and were entered onto the register.

Chart 1 also illustrates the proportion of trade mark attorneys in each year who are members of CIPA or ITMA or alternatively members of both organisations. Of the 817 trade mark attorneys in active practice who are members of CIPA or ITMA, 504 (62%) are members of CIPA and 639 (78%) are members of ITMA. There is therefore a considerable overlap between the memberships of the two institutes with 326 trade mark attorneys (39%) being members of both. Put another way, roughly half of ITMA’s members are also members of CIPA.

A changing profession

The raw figures, however, hide a significant movement away from a trade mark profession dominated by patent attorneys, towards one in which trade mark specialists prevail. This trend is illustrated by Chart 2 which shows the percentages of trade mark attorneys who are members of CIPA and ITMA divided into five-year blocks by year of qualification.

Chart 2

Chart 2 shows that, prior to 1980, over 80% of trade mark attorneys were qualified as patent attorneys, with the remaining trade mark attorneys qualifying by taking ITMA’s exams. Of the individuals joining the trade mark profession before 1980, roughly two-thirds chose to join ITMA with the remaining third being patent attorneys working in trade marks who chose to be solely members of CIPA.

From the early 1980s onwards, however, the number of trade mark attorneys qualifying who were not also patent attorneys increased significantly. As a result, the proportion of trade mark attorneys who are qualified as patent attorneys has declined, with less than 20% of the trade mark attorneys who qualified between 1996 and 2000 also being qualified as patent attorneys. With the decline in the numbers of patent attorneys qualifying as trade mark attorneys, the relative proportion of trade mark attorneys who chose not to be members of ITMA has also declined so that now almost all newly qualified trade mark attorneys are ITMA members.

Trade mark lawyers

At the same time as the non-patent attorney trade mark profession has grown, it has also increasingly become legally qualified. This trend is illustrated by Chart 3 which shows the number of non-patent attorney trade mark attorneys qualifying between 1981-2000 together with indications of the numbers of those trade mark attorneys who based on their entries in the ITMA membership list, can be identified as either holding a law degree or as being qualified lawyers.

Chart 3

The decline of the dual qualified attorney

Charts 4 and 5 illustrate the declining number of patent attorneys working in trade marks from the perspective of the patent profession. Chart 4 shows the absolute numbers of patent attorneys qualifying each year between 1978 and 2001 together with an indication of the number of those patent attorneys who are qualified as trade mark attorneys, either through the grandfather provisions or alternatively through passing ITMA’s or the JEB’s trade mark exams.

Chart 4

Chart 4 shows that apart from three individuals who qualified as patent attorneys in 1978, 1986 and 1992 respectively, prior to 1993 all patent attorneys who qualified as trade mark attorneys did so on the basis of their qualification as a CPA together with the experience in trade marks required for entry onto the register.

More recently small numbers of patent attorneys have decided to qualify as trade mark attorneys by passing the JEB examinations. However, compared with the total numbers qualifying as patent attorneys the numbers are low. This is more clearly evident from Chart 5, which shows the proportion of patent attorneys who are also qualified as trade mark attorneys by year of qualification for the years 1978 – 2001.

Chart 5

Chart 5 shows that, prior to 1994 and the introduction of the extra hurdle of having to pass the advanced JEB trade mark papers, approximately 20% of all patent attorneys qualified as trade mark attorneys on the basis of their patent qualification and experience in trade marks. Conversely even when no additional examinations over and above those for qualifying as a patent attorney needed to be passed, around 80% of patent attorneys did not undertake any or sufficient trade mark work to qualify as trade mark attorneys when the register was introduced.

In the last 10 years, with entry onto the register of trade mark agents requiring patent attorneys to pass the JEB’s advanced trade mark exams in addition to the exams necessary to qualify as a patent attorney, the percentage of patent attorneys qualifying as trade mark attorneys has dropped considerably. Initially the percentage of patent attorneys dual-qualifying hovered at around 10%. This percentage has since fallen, standing at below 5% of patent attorneys who have qualified since 1998.

Conclusion

It is clear that the trade mark profession is changing. In contrast to 1980 when over 80% of professionals working as trade mark attorneys were qualified as patent attorneys, today only 62% of trade mark attorneys are patent attorneys. On the basis of current trends, that proportion will fall still further. At the same time, whereas previously one in five patent attorneys undertook a significant amount of trade mark work, that proportion has fallen so that fewer than one in every ten patent attorneys now qualifies for entry on the register of trade mark agents. Increasingly, it appears that the patent and trade mark professions, so long intimately entwined, are gradually becoming separate and distinct professions.

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