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 way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would 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 and the rules regarding Representation of Others Before the Find A Patent Attorney and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel who is an energetic member in good standing from the bar of the highest court of a state inside the U.S. (including the District of Columbia as well as any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with 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 like improper signatures and utilize claims and allow 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 a number of licensed US attorneys who can still aid in expanding protection of our own client’s trade marks into the United States. No changes to such arrangements is going to be necessary so we remain offered to facilitate US trade mark applications on the part of our local clients.

United States Of America designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed through to acceptance at the first instance to ensure that a US Attorney will not need to be appointed in this situation. Office Actions will need to be responded to by qualified US Attorneys. This change 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 capable of 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 to the Trade Marks Act will take consistency across the Patent Helper, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the sole act to enable this defence. We expect that the removing of this area of the Trade Marks Act allows the “unjustified threats” provisions of the Trade Marks Act to get interpreted similar to vuiatc Patents Act. Thus, we believe chances are that in case infringement proceedings are brought against a party that is ultimately found never to be infringing or perhaps the trade mark is found to be invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.

Additionally, a new provision will likely be added to the Inventhelp Product License, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages in case an individual is deemed to get made unjustified threats of proceedings for infringement. The court will consider numerous factors, such as the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner from your threat and the flagrancy from the threat, in deciding whether additional damages are to be awarded against the trade mark owner.

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