A GLASGOW law firm that caused uproar in the legal community when it applied to trade mark the words Legal Engineer has had partial success at the UK Intellectual Property Office (UKIPO), which threw out the application in relation to five specific areas but allowed it to proceed for five more.
Cloch Solicitors, which specialises in intellectual property, applied to register the mark in June last year, with the intention of owning the rights to use the phrase on everything from software and printed matter to stationery and clothing.
A number of law firms and organisations objected to the move, however, noting that the term had originally been coined by author Richard Susskind a decade ago and is now widely used in the legal sector to refer to a specific job that combines legal knowledge with technical expertise.
International law firm Pinsent Masons and technology businesses Wavelength Law and HighQ Solutions raised official objections, arguing that the term “is descriptive in relation to certain services and should be kept free for everyone in the legal engineering trade to use”.
READ MORE: IP firm Cloch fails in bid to trade mark the word loch
The Law Society of England and Wales and law firm Shoosmiths, which was acting on a client’s behalf, also made representations to the UKIPO.
While he allowed the application to continue in relation to clothing and the design of computer games software, among other classes, UKIPO hearing officer Dafydd Collins rejected it in relation to software, marketing materials and publications.
“I find the mark applied for to be a term which directly describes a role, and or actual profession, and is one which others in the same field of business should be free to use,” Mr Collins said.
Despite this, Cloch managing director Philip Hannay welcomed the decision, saying that “most of the mark is proceeding” and that “many of those who lodged observations had clear ulterior motives”.
Those who raised objections also welcomed Mr Collins’s findings, with a spokesman for Shoosmiths noting that the firm’s client had wanted to “prevent registration of the term so that it is free for use by the relevant public, without the risk of infringing registered rights”.
“Our client wished to prevent registration of the term because it considers that legal engineer is devoid of distinctive character and customary in the current language or in the bona fide and established practices of trade,” he added.
David Halliwell, director of knowledge and innovation at Pinsent Masons, which was one of the first UK law firms to incorporate technology into legal practice, agreed.
“The only surprise about this is that anyone would invest so much effort arguing that they had recently invented a term that was demonstrably used at least 10 years ago by Richard Susskind,” he said.
“The term legal engineer is already enjoyed by legal professionals all round the world, not least the dozen we have at Pinsent Masons.”
Earlier this year Cloch failed in its bid both to trade mark the word loch and to stop another business registering nine individual marks containing the word.
The firm had sought to register the word for use in relation to legal services, but its application was opposed by Loch Employment Law, a Tunbridge Wells firm that operated an office in Edinburgh between 2016 and 2018.
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Loch Employment Law is part of the wider Loch Associates Group, whose nine applications for trade marks including the word loch, all of which were opposed by Cloch, were granted by the IPO.
Finding in Loch Employment Law’s favour, UKIPO hearing officer Oliver Morris said that “there is no evidence whatsoever that Mr Hannay had, or has, any legitimate interest in the loch trade mark”.
“I come to the clear view that when Mr Hannay filed the mark he had no intention of using it in trade and that it was filed to give him the upper hand in the dispute, acting as a spoiling mechanism against [Loch Employment Law],” Mr Morris added.
Cloch Solicitors owns a number of other trade marks including Fyfe Ireland, Go Figure and Glasgow Kiss. The latter is also registered to Glasgow coffee business The Steamie.
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