In late December, LegalForce and Raj V. Abhyanker, who are associated with the trademark search-engine business Trademarkia filed a lawsuit for monetary and other relief against LegalZoom. Abhyanker contends that he has lost $20,000,000 in sales because lawyers cannot provide services the same way that LegalZoom does.
In Canada, only trademark agents are permitted to represent clients before the Canadian Intellectual Property Office. Trademark agents can be lawyers, but they can also be non-lawyers. Both lawyers and non-lawyers who want to be trademark agents now need to pass a qualifying exam administered by the Canadian Intellectual Property Office, which can only be written after working in the field of trademarks for at least two years.
Being a non-lawyer trademark agent in Canada does come with certain limitations. For example, if a potential infringement issue arises, a non-lawyer trademark agent is obligated to inform their client that they are not qualified to advise them on that issue and to refer them to a lawyer. Additionally, if a client seeks advice on protecting their intellectual property and there are possible protections outside of trademarks, the trademark agent will have to refer the client to a lawyer who can advise them on copyright, industrial designs and other forms of IP protection in Canada.
Trademark agents are a self-regulated profession in Canada, but being a trademark agent does not excuse a lawyer from their ethical obligations owed to the provincial bar to which they are called. Mr. Abhyanker does not want to have to put client money into trust, or to have to run conflicts checks, but the LegalForce website states that the firm does IP litigation as well as corporate law. In Canada, even if a law firm has non-lawyer trademark agents prosecuting trademark applications, the Law Society rules still apply to the firm as a whole, and conflicts checks must be run and client funds must be put into trust accounts where required. We are not aware of any circumstances in Canada where a law firm would not be subject to Law Society rules and regulations.
We will continue to follow the progression of this case from Canada.