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 a licensed US attorney.

The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases and the rules regarding Representation of Others Before the Inventhelp Invention Stories and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal place of work will not be located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who may be an active 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 from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with 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 enable 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 several licensed US attorneys who can carry on and aid in expanding protection in our client’s trade marks into america. No changes to those arrangements will be necessary so we remain accessible 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 in the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed through to acceptance at the first instance to ensure 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 United States – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients will not change.

A large change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will not 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 will soon not be possible.

This amendment towards the Trade Marks Act will bring consistency throughout the Inventhelp Invention Prototypes, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the sole act to permit this defence. We expect that the removing of this portion of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to get interpreted comparable to vuiatc Patents Act. Thus, we feel it is likely that in case infringement proceedings are brought against an event that is ultimately found not to be infringing or perhaps the trade mark is found to get invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.

Additionally, a brand new provision will be added to the Inventhelp Innovation News, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the ability to award additional damages in case an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider a number of factors, including the conduct in the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat as well as the flagrancy of the threat, in deciding whether additional damages have to be awarded from the trade mark owner.

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