The Product Ideas 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be allowed 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 principles of Practice in Trademark Cases and the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to become represented by an attorney who is an active member in good standing from the bar of the highest court of a 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 with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants usually are not subjected to invalidation for reasons like improper signatures and use 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 numerous licensed US attorneys who can still help with expanding protection of our client’s trade marks into America . No changes to such arrangements is going to be necessary and that we remain accessible 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 that the USPTO will review procedures for designations which proceed to acceptance in the first instance so that a US Attorney need not be appointed in this situation. Office Actions will need to be responded to by qualified US Attorneys. This modification will affect self-filers into the USA – our current practice of engaging How To Obtain A Patent to answer Office Actions on behalf of our local clients will never change.

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

This amendment for the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the only real act to enable this defense. We expect that removing this area of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to get interpreted like the Inventhelp Office Locations. Thus, we know chances are that in the event that infringement proceedings are brought against a party who vafnjl ultimately found to not be infringing or perhaps the trade mark is found to become invalid, the trade mark owner will likely be deemed to get made unjustified or groundless threats.

Furthermore, a whole new provision is going to be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages in the event that a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, such as the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat as well as the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.