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 by way of 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 principles of Practice in Trademark Cases and also the rules regarding Representation of Others Ahead of the Inventhelp Commercial to require applicants, registrants, or parties to your proceeding whose domicile or principal place of work will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who is an active member in good standing in the bar in the highest court of any state within the U.S. (including 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 a qualified U.S. attorney will instill greater confidence inside 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 encourage 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 carry on and assist with expanding protection of our client’s trade marks into america. No changes to these arrangements will be necessary so we remain offered to facilitate US trade mark applications on the part of our local clients.
United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed right through to acceptance at the first instance to ensure that a US Attorney need not be appointed in this instance. Office Actions will need 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 the part of our local clients will not change.
A huge change is placed to come 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 being a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment towards the Trade Marks Act brings consistency across the Invent Help, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which until now, was the only real act to allow this defence. We expect that the removing of this section of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to get interpreted like the Patents Act. Thus, we feel 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 get invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
In addition, a brand new provision will be added to the Inventors Help, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages in case an individual is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider several factors, including the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat and the flagrancy in the threat, in deciding whether additional damages should be awarded from the trade mark owner.