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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 through 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 a licensed US attorney.

The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and the rules regarding Representation of Others Before the New Invention Idea to require applicants, registrants, or parties to a proceeding whose domicile or principal workplace will not be located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who may be an active member in good standing of the bar of the highest court of a state inside the U.S. (including 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 certainly not susceptible to invalidation for reasons like improper signatures and use 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 can carry on and aid in expanding protection of our own client’s trade marks into the usa. No changes to these arrangements is going to be necessary and we remain accessible to facilitate US trade mark applications on behalf of our local clients.

United States designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated that the 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 this instance. Office Actions will have to be responded to by qualified US Attorneys. This modification will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients will not change.

A huge change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer 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 from a cross-claim of groundless or unjustified threats. However, this can soon no longer be possible.

This amendment to the Trade Marks Act brings consistency over the Inventhelp Successful Inventions, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the only act to allow this defence. We expect that the removal of this area of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to be interpreted similar to the Patents Act. Thus, we know it is likely that in the event infringement proceedings are brought against a party who fwhdpo ultimately found never to be infringing or perhaps the trade mark is located to be invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.

Furthermore, a whole new provision will be put into the How Do I Patent An Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider several factors, such as the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat and also the flagrancy of the threat, in deciding whether additional damages have to be awarded against the trade mark owner.

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