What do you do when you need to find local counsel for a particular client or type of work in a jurisdiction in which you currently have no counsel in place? Here’s some advice:
The appropriate type of counsel
One must choose the appropriate type of trademark professional for the particular kind of market. Various possible choices include:
- trademark agents versus trademark attorneys/lawyers;
- barristers versus solicitors; and
- patent attorneys versus trademark attorneys.
The first of these distinctions, between trademark agents and trademark attorneys, is often best described or understood in relation to whether or not the particular counsel is legally qualified—that is, trademark attorneys will most often have attended law school and have a law degree, while trademark agents are properly trained in trademark agency, prosecution tasks and subject matter but do not necessarily have a legal background or accreditation.
In some jurisdictions, the privacy of discussions between lawyers and their clients will be protected by attorney-client privilege; however, privilege may not apply between agents and their clients. One of the primary issues to consider in selecting local counsel is the existence (or not) of an attorney/solicitor/client/agent privilege between local counsel and your firm (as remote counsel) or directly between local counsel and the client. In contentious matters, a properly initiated, delineated and protected relationship should exist to ensure that the cloak of privilege protects provided advice.
Barristers versus solicitors
Many people dealing with counsel in the United Kingdom or other Commonwealth jurisdictions will encounter the distinction between barristers and solicitors. Though an oversimplification of the dichotomy, the general concept is that barristers represent clients in court and contentious tribunal matters, while solicitors typically provide transactional advice and services in prosecution (drafting of agreements, etc.). Depending on the nature of the help required, you might need to understand this difference and ensure that either the individual or firm selected has the appropriate capacity to provide help.
Patent counsel is not always trademark counsel
Patent agents and patent attorneys are most often separately licensed and regulated from trademark agents or trademark attorneys. Many people might hold both categories of accreditation. For example, a patent agent who is not also a trademark agent would not be able to assist with certain types of trademark work and vice versa.
Searching your existing professional network
The first, and in most cases best, source of information for location and selection of local counsel may be your existing professional network. Most often you will find that colleagues with whom you already work (in your own country or elsewhere), will be forthcoming with recommendations of foreign attorneys in jurisdictions where they have relationships and you do not.
Direct clients, with or without in-house legal departments, are often a good source of information in this regard as well. For example, you might have a direct client with operations or counsel relationships in other countries who is able to make connections or referrals for you. In either case, making connections through colleagues or clients should provide the best possible source for understanding the proposed counsel; in most cases the referring party has previously worked with those being referred and would likely not recommend someone who is not up to a certain standard.
In some cases your firm or company might also be a member of a network of similar firms through whom local market connections can be made—for example, in the law firm network sites Lex Mundi, Tag Law, etc. These sites provide another means of contacting credible firms that are of a certain standard, etc. These networks will often provide members a simplified path to finding the right resources, perhaps initial consultation discounts, or other added benefits for use on behalf of your client. While the connections you make may not be people you have met or know, there is a strong affinity or level of understanding within the network of the nature and standard of member firms.
Another great source of information for the selection of local counsel in foreign jurisdictions, in areas where you might not have a direct connection in the local market, is a directory of topical industry associations in various areas of interest, such as the INTA Membership Directory. Particularly in countries or regions where you may not have a direct or indirect contact in your network, you can identify firms or individuals who might have the necessary expertise or subject matter interest to assist you. Using the INTA Membership Directory and its tools, can also help you justify and enhance the value of your INTA membership! If you are an active participant in INTA, making these contacts and connections can also help you build your general professional network, and you may potentially find common connections with firms or attorneys.
Searching the Internet
The widest net possible can be cast searching for local counsel using Internet searches, or other online tools such as LinkedIn, etc. Particularly if you are searching for local counsel in a specific region to address difficult issues, you may need to resort to this type of broad search to identify additional local counsel options.
Vetting potential candidates
Once you identify potential local counsel, you can also use online tools to learn about the particular attorneys, firms, etc. For example, start by looking at an attorney or firm’s website or LinkedIn profile to learn about the attorney or firm’s background and areas of expertise and to find shared connections. In smaller markets or areas with a smaller number of available firms, it is particularly important to check for conflicts of interest. Before disclosing client identity and the matter at issue, do a full conflict check with firms, particularly if the counsel firm itself is unknown to you. Even if a firm is not chosen because of a conflict of interest, someone at the firm might recommend another attorney or firm in the market who might be able to assist you.
Once you have selected local counsel and cleared the representation of your client, you can move into the next stages of engagement. Good luck!
Submitted on behalf of the Law Firm Committee.