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 will otherwise be permitted to file trade marks directly with the USPTO without engaging an authorized 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 Ahead of the Inventhelp Commercial to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel who may be a dynamic member in good standing from the bar in the highest court of any state within the U.S. (such as the District of Columbia and any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are certainly not subjected to invalidation for reasons such as improper signatures and make use of 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 several licensed US attorneys that will carry on and assist with expanding protection in our client’s trade marks into the usa. No changes to these arrangements will likely be necessary and that we remain available to facilitate US trade mark applications for our local clients.
U . S . designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed to acceptance at the first instance to ensure 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 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 never 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 from a cross-claim of groundless or unjustified threats. However, this will soon not be possible.
This amendment for the Trade Marks Act will bring consistency throughout the Invention Website, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the only act to allow this defence. We expect that removing this area of the Trade Marks Act allows the “unjustified threats” provisions of 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 party who fwhdpo ultimately found to not be infringing or even the trade mark is located to become invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
Furthermore, a brand new provision is going to be included in the Brainstorming Invention Ideas, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages when a person is deemed to get made unjustified threats of proceedings for infringement. The court will consider numerous 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 of the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.