What is a trade mark agent trainee?
A trade mark agent trainee is a person who is in the process of completing the requirements "How to Become a Trade mark Agent" to become a registered trade mark agent in Canada. The term is normally applied to those candidates who do not have a law degree. To be eligible to write the trade mark agent qualifying examination, a candidate must either be a lawyer (or a notary in Québec), or have worked in the area of trade mark law for a period of at least two years.
So, I don't need a law degree?
Although it is common for trade mark agents to also be lawyers, a law degree is not a necessity in order to become a trade mark agent. Once a registered trade mark agent, an individual is qualified under the Trade-marks Act to represent trade mark applicants in obtaining registrations from the Trade marks Office, whether or not they have a law degree.
At this time, a university or college degree is not a specific requirement to become a registered trade mark agent, however, this may change in the future.
Trade mark agents must have a firm understanding, not only of the Trade-marks Act and its corresponding rules, but also of Trade marks Office practice and Canadian trade mark case law in order to competently serve their clients in obtaining and maintaining trade mark registrations. The best training for a trade mark agent trainee is the experience he or she can only get on the job, working with the guidance of other registered trade mark agents.
What do employers look for?
It goes without saying that trade mark agent trainees must have strong oral and written communication skills, basic legal knowledge and keen attention to detail, but they must also have a creative side. Of course, a large part of the job is oral and written correspondence with clients, ascertaining how they intend to use their marks, and in connection with which wares and services.
Another important aspect of the job is written correspondence with the Trade marks Office, devising creative and convincing arguments that a particular trade mark is registrable. This involves looking at words and phrases in new and creative ways, devising arguments to differentiate your client's trade mark from those of others in appearance, sound and connotation. An appreciation for language is crucial. A candidate's background, both in terms of education and work experience, is not necessarily the deciding factor in the hiring process. Trade mark agents come from diverse backgrounds, including, English, dramatic arts, psychology, the sciences, and various engineering disciplines, to name only a few.
How competitive is it?
Getting hired as a trade mark agent trainee is a highly competitive process. Candidates must, through their cover letters, résumés and interviews, show a demonstrated interest in trade mark law. Work experience in a related field can also help to distinguish a candidate from the crowd. For instance, a background in an industry where trade marks are prevalent, such as marketing, advertising, or publishing may be helpful, although far from necessary.
HOW DO I BECOME A TRADE MARK AGENT?
What kind of background do I need?
Currently, there are no specific educational pre-requisites to becoming a trade mark agent. Some exposure to legal issues and trade marks is helpful, but not a necessity. Essentially, a candidate must have strong oral and written communication skills, an attention to detail and a demonstrated interest in the area of trade marks. A trade mark agent is not a lawyer, although many trade mark agents in Canada are also lawyers.
Are there any other requirements?
According to Rule 18 of the Trade-marks Regulations (1996), in order to be eligible to write the qualifying examination to become a registered trade mark agent in Canada, prior to October 1, of the year a candidate intends to sit for the exam, he or she must:
(a) reside in Canada; and
(b) be either a lawyer entitled to practise in any province of Canada, or a notary entitled to practise in Québec; or
(c) have worked in Canada in the area of Canadian trade mark law for at least 24 months.
Once a candidate has passed the qualifying examination, he or she must make a written request to the Registrar of Trade marks to be entered on a list of trade mark agents, and must pay the associated fee.
Lawyers (or notaries in Québec) may opt not to write the qualifying examination and, instead, submit an affidavit or statutory declaration to the Registrar of Trade marks, attesting to the fact that they have worked in Canada in the area of Canadian trade mark law for at least 24 months.
To be able to say that he or she has "worked" in the area of Canadian trade mark law and practice, a candidate must have engaged in the preparation and prosecution of trade mark applications.
A resident of another country, who is entitled/qualified to practise before the trade marks office of that country, may, upon request, be entered on the list of trade mark agents in Canada. However, the Registrar of Trade marks will not correspond directly with this individual. Rather, the Registrar will correspond only with the trade mark applicant (if he or she resides in Canada), or an agent residing in Canada who has been appointed by this individual.
What is the qualifying examination all about?
The Examining Board of the Canadian Intellectual Property Office (CIPO) administers the exam, which is held once a year in October, and covers both trade mark law and practice. Regulations concerning the qualifying examination are contained in Rules 18 to 20 of the Trade-marks Regulations (1996) http://laws.justice.gc.ca/en/T-13/SOR-96-195/. In order to be eligible to write the examination, a candidate must be either a lawyer entitled to practise in a Canadian province (or a notary entitled to practise in Québec), or have obtained his or her two years of experience by October 1, of the year he or she intends to write.
What is the exam format?
The examination is practically oriented with a strong emphasis on trade mark practice. The examination is a mix of short and long-answer questions. It occurs over a two-day period, with a three-hour paper each day.
What do I need to pass?
Candidates must achieve a minimum mark of 97.5 (out of 150) on each paper, with a minimum aggregate mark of 195 for both papers. In other words, candidates must achieve 65% on each paper, as well as a combined score of 65% on both papers. If a candidate fails one paper, he or she must repeat the full examination (both papers) at a subsequent sitting.
How hard are they?
Practising in the area of trade mark law is highly complex, and the exams are designed to test proficiency in the skills and legal knowledge required to address all of the major facets of trade mark practice. It can take a great deal of on-the-job training in trade mark practice and supplemental study of trade mark law to reach the necessary level of proficiency to serve clients well, and to pass the qualifying examination. It is typical that less than a third of the candidates sitting the qualifying examination will pass in any given year.
Is there anything I can do to increase my chances of passing?
There are a couple of courses and seminars led by trade mark practitioners that are available to assist a candidate in his or her preparation for the exam:
McGill Summer Course in Intellectual Property
McGill University and the Intellectual Property Institute of Canada (IPIC) provide intensive summer courses in intellectual property, including, trade marks, copyright and patents. The lectures and workshops in the introductory trade mark course portion walk participants through the application process, from searching to registration.
The Intellectual Property Institute of Canada (IPIC)
In the fall, IPIC offers a tutorial program specifically tailored to assist candidates with strategies for writing and passing the trade mark agent exam. Candidates prepare answers to simulated exam questions in advance of the tutorial sessions. A one-day intensive tutorial is then typically held in Ottawa, usually in September, shortly before the qualifying examination, to review the answers. Valuable feedback is provided to candidates on their submitted answers.
Canadian Intellectual Property Office (CIPO)
In addition, candidates can obtain examinations from previous years from the Reproduction and Sales Section of the Canadian Intellectual Property Office (Tel: (819) 997-1206, Fax: (819) 953-9969).
