The USPTO recently suggested changes which would force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and deceptive applications by self-filers. The proposed changes, published by way of a Notice of Inventions Ideas 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 principles of Practice in Trademark Cases and also the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal place of business 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 energetic member in good standing of the bar in the highest court of any state in the U.S. (such as the District of Columbia as well as 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 certainly not susceptible to invalidation for reasons like improper signatures and utilize 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 numerous licensed US attorneys who will continue to assist with expanding protection of our client’s trade marks into the usa. No changes to these arrangements will be necessary and that we remain available 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 is actually anticipated that this USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney need not be appointed in this situation. Office Actions will need to be responded to by New Product Idea. This transformation will affect self-filers into the United States – our current practice of engaging a US Attorney to respond to Office Actions for our local clients is not going to change.

A big change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings 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 may soon not be possible.

This amendment towards the Trade Marks Act will take consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which until now, was the only act to allow this defence. We expect that the removing of this area of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to get interpreted just like the Patents Act. Thus, we feel it is likely that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found not to be infringing or even the trade mark is found to get invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.

In addition, a new provision will likely be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the ability to award additional damages in case a person is deemed to have made unjustified threats of proceedings for infringement. The court will consider numerous factors, such as the conduct of the trade mark owner after making the threat, any benefit derived by the Inventhelp Products through the threat and the flagrancy in the threat, in deciding whether additional damages have to be awarded against the trade mark owner.

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