The USPTO recently suggested changes which may force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and deceptive applications by self-filers. The proposed changes, published through a Notice of Inventhelp Store on 15 February 2019, will affect foreign applicants who would otherwise be permitted to submit trade marks directly with the USPTO without engaging an authorized US attorney.
The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and also 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 will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is an energetic member in good standing of the bar of the highest court of the state in the U.S. (such as the District of Columbia and then any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by 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 make use of claims and allow the USPTO to more effectively 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 several licensed US attorneys who can carry on and assist with expanding protection in our client’s trade marks into america. No changes to these arrangements will likely be necessary and that we remain offered 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 inside the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed 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 Inventhelp Products. This change will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients will never change.
A large change is placed 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 as 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 for the Trade Marks Act brings consistency throughout 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 defence. We expect that removing this section of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to get interpreted just like the Patents Act. Thus, we know chances are that in the event infringement proceedings are brought against a party afhbnt is ultimately found never to be infringing or the trade mark is located to be invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.
Additionally, a brand new provision will be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the energy to award additional damages when an individual is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, like the conduct in the trade mark owner after making the threat, any benefit derived through the How To Get A Patent For An Idea from the threat as well as the flagrancy in the threat, in deciding whether additional damages have to be awarded from the trade mark owner.