Agent Title, Conflict of Interest and Address for Service

The protected title is 'registered trade mark agent'. Only an individual whose name is on the register maintained by the Controller may use that title. Cian is not registered. He should not sign as 'Trade Mark Agent' or 'Registered Trade Mark Agent'; that implies a professional status he does not hold. He should sign as 'trainee trade mark attorney', 'paralegal' or 'IP consultant', and the correspondence should make clear that a registered agent is supervising the file.

Harbour IP's letterhead saying 'Registered Trade Mark Agents' is risky if only two of its consultants are registered. A firm may describe itself as a firm of trade mark agents, but it should not imply that every person named is a registered trade mark agent. The safer approach is to list the registered individuals by name and registration number, and label the others as consultants. If the firm itself is not registered, 'registered trade mark agents' may be read as a description of the firm, which is misleading.

Nolan & Byrne must remove Aisling's name and title immediately. Continuing to list her as a partner or registered agent after she left misrepresents the position to clients and the public, and could amount to passing off or misleading commercial communication. It also creates data-protection and client-confidentiality issues. Aisling should check that her own registration is current; if it has lapsed, she cannot use the title until restored.

This is a direct conflict. Aisling acted for Solas on the same Irish application that is now opposed. She is likely to hold confidential information about Solas's filing strategy, goods specification, commercial plans and possibly weaknesses in the application. Acting for Bracken Foods against Solas in that opposition would use, or risk using, that information against a former client. The duty of confidentiality continues after the retainer ends.

The conflict is not cured merely by a screen or by Aisling not personally working on the file. The matter is the same matter, and the firm's knowledge is imputed. Harbour IP should decline the Bracken Foods instruction. The only possible route would be informed consent from Solas after full disclosure, but consent is unlikely and should not be assumed. If Harbour IP acts without consent, it risks an application to restrain it, disciplinary consequences for Aisling, and damage to the firm's reputation.

The practical steps are: decline the instruction in writing; return any Bracken documents; do not discuss Solas's file with Harbour IP colleagues; record the conflict check; and refer Bracken Foods to an independent firm. Aisling should also remind Nolan & Byrne of its continuing confidentiality obligations.

A UK solicitor who is not on the Irish register may act for the client in the sense of giving instructions, but cannot describe themselves in Ireland as a 'registered trade mark agent'. The notice of opposition must be signed by the opponent or an authorised agent. The UK solicitor can sign only if the client has authorised them; a power of attorney or written authorisation should be on file. Harbour IP should also obtain its own authorisation if it is filing.

The address for service is the key practical issue. The opponent must provide an address for service in the State for the proceedings. A UK address will not satisfy that requirement. The UK solicitor cannot be the address for service if the rules require an address in the State. Harbour IP, as a registered agent with an Irish address, can be the address for service, but it must have the client's written authority to act and to receive service.

The file should therefore contain: the client's signed authorisation; the UK solicitor's authority to instruct Harbour IP; a clear statement of who signs the notice; and confirmation that Harbour IP is the address for service. If the UK solicitor signs, the notice should identify the opponent and the authorised representative accurately, without using a protected Irish title.