The USPTO recently proposed changes which will 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: America Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the Inventhelp Inventions Store to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work will not be located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by a lawyer who may be an energetic member in good standing of the bar in the highest court of any state inside the U.S. (including the District of Columbia and any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by way of a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as improper signatures and make use of claims and allow the USPTO to better 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 can carry on and help with expanding protection in our client’s trade marks into the United States. No changes to these arrangements will likely be necessary and that we remain offered to facilitate US trade mark applications on the part of our local clients.

United States Of America designations filed through the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed through to acceptance in the first instance in order that a US Attorney need not be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This transformation will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions for our local clients will not change.

A big change is placed in the future 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 as 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 will soon not be possible.

This amendment towards the Trade Marks Act will bring consistency over the Inventhelp Locations, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the only real act to allow this defence. We expect that the removal of this portion of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to get interpreted similar to the Patents Act. Thus, we feel it is likely that in the event infringement proceedings are brought against an event who fwhdpo ultimately found not to be infringing or even the trade mark is located to get invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.

Additionally, a new provision will likely be included in the Invention Website, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages when a person is deemed to get made unjustified threats of proceedings for infringement. The court will consider numerous factors, like the conduct of 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 from the trade mark owner.

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