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 submit trade marks directly with the USPTO without engaging a certified US attorney.
The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and the rules regarding Representation of Others Prior to the Invent Help Tech to require applicants, registrants, or parties to some 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 get represented by a lawyer who is an active member in good standing from the bar in the highest court of a state in the U.S. (like the District of Columbia as well as any Commonwealth or territory of 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 usually are not subject to invalidation for reasons including improper signatures and utilize 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 numerous licensed US attorneys who can continue to assist with expanding protection of our own client’s trade marks into the usa. No changes to those arrangements will likely 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 by way of the Madrid protocol will fall in the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed through to acceptance on the first instance in order that a US Attorney do not need to be appointed in this situation. Office Actions will have to be responded to by qualified US Attorneys. This modification will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients is not going to change.
A huge 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 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 may soon not be possible.
This amendment to the Trade Marks Act brings consistency throughout the Inventhelp Store Products, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the sole act to allow this defence. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to be interpreted similar to the Patents Act. Thus, we believe chances are that in the event that infringement proceedings are brought against an event who fwhdpo ultimately found not to be infringing or the trade mark can be found to be invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.
In addition, a new provision is going to be put into the What To Do With An Invention Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages in case a person is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider several factors, including the conduct in the trade mark owner after making the threat, any benefit derived by the trade mark owner from your threat and the flagrancy in the threat, in deciding whether additional damages should be awarded up against the trade mark owner.