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 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 Before the How To Make An Invention Prototype With Inventhelp and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal place of work is not located within the United States (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 in the bar of the highest court of any state in the U.S. (including the District of Columbia and any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by 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 such as improper signatures and use claims and encourage 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 numerous licensed US attorneys who will still assist with expanding protection of our client’s trade marks into america. No changes to these arrangements will likely be necessary and we remain available to facilitate US trade mark applications on behalf of 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 that this USPTO will review procedures for designations which proceed through to acceptance on the first instance to ensure that a US Attorney need not be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This change will affect self-filers into the usa – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients will never change.

A huge change is set in the future into force for Australian trade mark owners, who, from 25 February 2019, will not be able to rely on the commencement of infringement proceedings as 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 can soon not be possible.

This amendment for the Trade Marks Act brings consistency over the How Do You Get A Patent With Inventhelp, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to allow this defence. We expect that the removing of this portion of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to be interpreted comparable to vuiatc Patents Act. Thus, we believe chances are that in case infringement proceedings are brought against an event who may be ultimately found to not be infringing or even the trade mark is found to get invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.

In addition, a whole new provision will be put into the Product Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the energy to award additional damages when an individual is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider several factors, like 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 from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.

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