The Inventhelp Locations 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 way 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: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases as well as the rules regarding Representation of Others Before America Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not located within America or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer who may be an energetic member in good standing from the bar of the highest court of the state in the U.S. (like the District of Columbia and any Commonwealth or territory in 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 subjected to invalidation for reasons like improper signatures and use claims and enable 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 assist with expanding protection of our client’s trade marks into the USA . No changes to such arrangements is going to be necessary so we remain available to facilitate US trade mark applications on the part of our local clients.
United States Of America designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed right through to acceptance on the first instance to ensure that a US Attorney will not need to be appointed in this situation. Office Actions will have to be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging New Ideas For Inventions to answer Office Actions on the part of our local clients will never change.
A huge change is defined to come into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of 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 may soon not be possible.
This amendment towards the Trade Marks Act brings consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the sole act to permit this defense. We expect that the removing of this section of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to become interpreted just like the Product Ideas. Thus, we feel chances are that in case infringement proceedings are brought against a party who vafnjl ultimately found not to be infringing or perhaps the trade mark can be found to get invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
Additionally, a new provision will be put into 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 the event that an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, like the conduct of the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat and the flagrancy from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.