She said that while it is common for lawyers to assure their clients that they have won cases just like that client’s case, if the Slaters application is granted “they would then attempt to enforce it against others”.

In a highly competitive legal field, Ms Murdoch surmised, this would “effectively mean” that other lawyers are unable to tell clients that they win cases like those of said clients.

“Client’s don’t want lawyers that simply say they can run the client’s case. Clients want lawyers who run cases just like their case all day every day and they want to know that the lawyer wins cases just like theirs. It reassures clients that you are familiar with the area of law because you have won cases like theirs previously,” she posited.

“But, in a wider sense, a trader should not be able to register a trade mark using words commonly used that other traders would want to legitimately use. The trademark move means Slater and Gordon want to stop other lawyers saying they win cases – or Slater and Gordon want to be the only lawyers permitted to say they win cases.”

Continual prior use is also a full defence to trade mark infringement, she continued, hypothesising that Slaters may have trouble enforcing it against traders who have been reassuring clients for years.

In order to infringe a trade mark, she said, “it must (among other things) be used as a sign – which is a badge of origin”, but this phrase does not meet that criteria.

According to Ms Murdoch, Slaters is a firm that “has aggressively chased new clients Australia-wide”, particularly “pursuing the personal injury law, union services, class actions, industrial and employment law and commercial and estate litigation markets”.

VIEW ALL

The contested phrase of ‘We win cases like yours’ would “sit usefully in these areas”, she said, but reflected that other lawyers in the same fields “routinely use such a phrase for their clients too”.

“Slater and Gordon aren’t trying to trade mark a special new phrase or combination of words. They’re taking something in common usage and trying to exclude everyone else from using it,” she concluded.

In response to questions from Lawyers Weekly about the comments made by the EAGLEGATE principal, Slaters said it “rejects” her assertions.

“It has long been our campaign tagline and like thousands of businesses, law firms and professional services organisations do with their campaign taglines, we are well within our right to protect our intellectual property. We are not aware of any other law firm that uses this tagline,” the firm said.