Cloch Solicitors partially succeeds with ‘legal engineer’ trade mark application

Philip Hannay

The firm applied to register the trade mark in June last year, a move which a number of law firms and other organisations objected to, noting that the term has first been coined by Professor Richard Susskind a decade ago and is now widely used within the legal community to mean a job that combines technical expertise and legal knowledge.

Pinsent Masons, Wavelength Law and HighQ Solutions officially objected, stating the term “is descriptive in relation to certain services and should be kept free for everyone in the legal engineering trade to use”.

Further representations were made to UKIPO by the Law Society of England and Wales as well as Shoosmiths.

The application was allowed to proceed insofar as it related to, among other things, clothing and the design of computer games software but was rejected by hearing officer Dafydd Collins in relation to marketing materials and publications as well as software.

“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.

Cloch managing director Philip Hannay welcomed the decision and said that “most of the mark is proceeding” and that “many of those who lodged observations had clear ulterior motives”.

The objectors also welcomed Mr Collins’ findings.

David Halliwell, director of knowledge and innovation at Pinsent Masons, said: “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.

“The term legal engineer is already enjoyed by legal professionals all round the world, not least the dozen we have at Pinsent Masons.”