The USPTO recently proposed changes which will 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 will 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 principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Prior to the Patent Help Companies to require applicants, registrants, or parties to your proceeding whose domicile or principal workplace is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who may be a dynamic member in good standing in the bar of the highest court of any state in the U.S. (like the District of Columbia and any Commonwealth or territory from 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 within the public that U.S. registrations that issue to foreign applicants are not subjected to invalidation for reasons such as improper signatures and utilize claims and allow the USPTO to more effectively 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 aid in expanding protection in our client’s trade marks into the United States. No changes to these arrangements is going to be necessary and that we remain accessible to facilitate US trade mark applications for our local clients.

United States designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed right through to acceptance at the first instance to ensure that a US Attorney will not need to be appointed in cases like this. 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 answer Office Actions on the part of our local clients is not going to change.

A big change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able 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 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 over the Inventhelp Number, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the only real act to permit this defence. We expect that the removing of this section of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to get interpreted like the Patents Act. Thus, we believe chances are that in the event infringement proceedings are brought against an event who fwhdpo ultimately found never to be infringing or even the trade mark is located to be invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.

Additionally, a new provision will likely be included in the Ideas For Inventions, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages when one is deemed to have made unjustified threats of proceedings for infringement. The court will consider several factors, like the conduct of 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 have to be awarded from the trade mark owner.

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