The best trademark attorney: lawyer or patent attorney?

What is a trademark attorney?

The term "trademark attorney" is not protected. The Trademark attorney is a lawyer or patent attorney with special expertise in the field of trademark law.

Many lawyers who describe themselves as trademark attorneys are Specialist lawyer for intellectual property rights. In addition to trademark law, the specialist lawyer for intellectual property law also covers other areas of law such as Competition law, Design law and patent law. There is no specialist lawyer for trademark law in Germany.

The best trademark attorney: lawyer or patent attorney?

Many laypersons believe that you have to go to a patent attorney for trademark disputes. This is wrong.

It is difficult to say who is the better trademark attorney. However, in our opinion, there are important reasons that speak in favor of the lawyer.

Patent attorneys are not fully qualified lawyers and certainly not lawyers with additional qualifications. Patent attorneys have not studied law. Rather, they are natural scientists or engineers with a two-year postgraduate course in patent and trademark law.

While lawyers study law for around five years before being admitted to the bar and complete a two-year legal clerkship, the part-time course of study for patent attorneys only lasts two years. Prior to this, the patent attorney has completed a diploma or master's degree in a technical field.

A technical patent application must therefore be carried out by a patent attorney. However, a trademark dispute is not a technical procedure. Rather, it is a typically intellectual dispute about an otherwise usually undisputed matter.

What does a patent attorney do?

The main task of a patent attorney is to draft patent applications. For a patent application, the patent attorney needs profound technical knowledge, as the technical structure of an invention must be explained in a clear, structured and comprehensible manner.

Before applying for a patent, the novelty of an invention must also be examined. For this purpose, the patent attorney sometimes reads and compares hundreds of patent applications. This also requires technical understanding.

For historical reasons, trademark law is also assigned to patent attorneys because trademarks and patents are administered by the same patent and trademark offices.

However, we have the impression that patent attorneys rarely develop a great passion for trademark law: On the one hand, patent mandates are far more lucrative, on the other hand, dealing with trademarks is not a technical but a purely humanistic occupation.

The lawyer is often the cheaper trademark lawyer

The lawyer is also regularly the more favorable Option: With flat-rate billing or billing by time, the rates charged by patent attorneys are usually much higher.

In the case of statutory fees, the law on fees provides for the lawyer's extrajudicial preliminary work to be offset in the court proceedings. This means that if the same lawyer handles the warning letter and the subsequent legal proceedings, the lawyer's fees are reduced in court. In trademark cases, the client quickly saves around 1,000 euros.

Patent attorneys, on the other hand, are not even allowed to appear before ordinary courts, i.e. regional courts and higher regional courts, because they are not lawyers.

The client must therefore, if the trademark dispute has not already been settled out of court by Submission of a cease-and-desist declaration with penalty clause can be settled, it is mandatory to consult a lawyer. However, the client has already paid the patent attorney in full and does so again with the attorney.

It can also be annoying when it comes to temporary injunctions: A temporary injunction is only granted to those who act quickly to show the court that the matter is particularly urgent. However, if the client has to look for a new lawyer first, unnecessary time is wasted, which entails certain risks of loss.

With Trademark applicationstrademark searches and trademark administration, there should be little difference between the two professional groups.

We therefore believe that the lawyer is the better trademark attorney in many cases.