The USPTO recently proposed changes which would force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and fraudulent applications by self-filers. The proposed changes, published through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be allowed to file trade marks directly with the USPTO without engaging an authorized US attorney.

The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and also the rules regarding Representation of Others Ahead of the Invent Help to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel who is an energetic member in good standing of the bar in the highest court of the state inside the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.

At Michael Buck IP, we already work closely with a number of licensed US attorneys who will still assist with expanding protection of our own client’s trade marks into the usa. No changes to such arrangements will be necessary and that we remain offered to facilitate US trade mark applications for our local clients.

United States Of America designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney do not need to be appointed in this instance. Office Actions will need to be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging a US Attorney to answer Office Actions on the part of our local clients will never change.

A large change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of rely on the commencement of infringement proceedings as a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from the cross-claim of groundless or unjustified threats. However, this may soon no longer be possible.

This amendment towards the Trade Marks Act will take consistency throughout the New Invention Ideas, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the only act to enable this defence. We expect that removing this area of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to become interpreted just like the Patents Act. Thus, we believe chances are that in the event that infringement proceedings are brought against a party who fwhdpo ultimately found not to be infringing or perhaps the trade mark can be found to get invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.

Additionally, a new provision will likely be added to the Inventhelp Company, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages in the event that one is deemed to get made unjustified threats of proceedings for infringement. The court will consider a number of factors, like the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner through the threat and the flagrancy of the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.

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