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 means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging an authorized US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and the rules regarding Representation of Others Before the How To Patent A Product and Trademark Office 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 that is a dynamic member in good standing of the bar in the highest court of any state in the U.S. (such as the District of Columbia and any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons including improper signatures and use 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 continue to assist with expanding protection of our client’s trade marks into the usa. No changes to such arrangements will be necessary so we remain offered to facilitate US trade mark applications for our local clients.
United States designations filed through the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed through to acceptance in the first instance in order that a US Attorney do not need to be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This change 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 never change.
A large change is set 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 from the cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment for the Trade Marks Act brings consistency across the How To Get A Patent With Inventhelp, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the sole act to permit this defence. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to become interpreted similar to vuiatc Patents Act. Thus, we know it is likely that in the event infringement proceedings are brought against a party who may be ultimately found never to be infringing or perhaps the trade mark is found to be invalid, the trade mark owner will be deemed to possess made unjustified or groundless threats.
Furthermore, a brand new provision will be included in the Inventors Corner, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages in the event that an individual is deemed to get made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, including the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat and also the flagrancy in the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.