Ethics, professional responsibility, and client representation
Ethics questions are rarely abstract. They test what you do when a deadline is missed, when two clients' interests diverge, or when a client wants an application filed in doubtful good faith.
Core duties
- Competence: know the Act, the Regulations, CIPO practice notices and the Goods and Services Manual. Decline or refer work outside your competence.
- Confidentiality: protect client information indefinitely and never use it for another client's benefit.
- Conflicts: do not act for two parties with adverse interests in the same or confusingly similar marks. Joint representation only with informed consent and a reasonable belief that you can act fairly for both.
- Candour: do not file applications in bad faith (s. 38(2)(e)), do not misstate facts to the Registrar or the Court, and do not draft evidence you know to be misleading.
- Client communication: engagement letter, scope, fees, docketed deadlines, and prompt reporting of reports, decisions and adverse outcomes.
- Scope of practice: hold out as a trademark agent only when registered; supervise paralegals and foreign associates.
Deadline management
Docket every date: examiner's report responses, opposition and counterstatement periods, evidence stages, s. 56 appeals, priority claims and renewals. If a deadline is missed, tell the client promptly and advise on remedies - concealment compounds the problem and may itself become a disciplinary matter.
Worked example
A long-standing client asks you to oppose a published application that is confusingly similar to a mark you are prosecuting for a second client. The second client's file contains confidential strategy information about its own expansion. You must decline the opposition unless both clients consent after full disclosure and no confidential information would be used. Otherwise, refer the matter out and screen the file. The test is not whether you feel impartial; it is whether a reasonable client would doubt your loyalty.
Traps that cost marks
- Acting on both sides of an opposition or a coexistence negotiation.
- Drafting an affidavit that states legal conclusions rather than facts.
- Using a section 45 request to pressure a competitor without a genuine basis.
- Failing to advise the client of foreign filing and priority deadlines that are not docketed in your office.