The Inventions 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 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 a licensed US attorney.
The NPR Summary reads: America 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 USA Patent and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal place of work is not really located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to become represented by an attorney who is an active 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 of 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 susceptible to invalidation for reasons such as improper signatures and make use of claims and enable 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 a number of licensed US attorneys who can continue to help with expanding protection of our client’s trade marks into the United States . No changes to those arrangements will likely be necessary and we remain accessible to facilitate US trade mark applications for our local clients.
United States Of America designations filed through the Madrid protocol will fall within 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 will not need to 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 Inventhelp to respond to Office Actions on behalf of our local clients is not going to change.
A huge change is placed in the future 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 a defense 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 towards the Trade Marks Act will take consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only act to permit this defense. We expect that the removal of this section of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to get interpreted similar to the Inventhelp Invention Marketing. Thus, we know chances are that in the event that infringement proceedings are brought against a celebration who vafnjl ultimately found never to be infringing or perhaps the trade mark is found to get invalid, the trade mark owner will be deemed to possess made unjustified or groundless threats.
Additionally, a whole new provision will be added to 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 possess made unjustified threats of proceedings for infringement. The legal court will consider a number of factors, such as the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner through the threat and the flagrancy from the threat, in deciding whether additional damages are to be awarded against the trade mark owner.