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 will otherwise be permitted to submit trade marks directly with the USPTO without engaging a certified 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 Prior to the I Want To Patent My Idea to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who may be an active member in good standing of the bar in the highest court of the state inside the U.S. (like the District of Columbia and then any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons including improper signatures and make use of claims and enable the USPTO to more efficiently 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 several licensed US attorneys that will still assist with expanding protection in our client’s trade marks into the usa. No changes to such arrangements is going to be necessary and we remain available to facilitate US trade mark applications on behalf of our local clients.

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

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

This amendment for the Trade Marks Act will take consistency over the Patent Attorney, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the sole act to allow this defence. We expect that removing this portion of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to become interpreted like the Patents Act. Thus, we believe it is likely that in the event that infringement proceedings are brought against a party who fwhdpo ultimately found to not be infringing or even the trade mark is found to become invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.

Additionally, a new provision will likely be included in the How To Patent An Idea With Invent Help, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when a person is deemed to get made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, such as the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.

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