The USPTO recently proposed 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 Invention Help Companies 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 Rules of Practice in Trademark Cases and the rules regarding Representation of Others Before america 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 (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel that is an energetic member in good standing of the bar from the highest court of any state in the U.S. (like the District of Columbia and then 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 susceptible 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 a number of licensed US attorneys who will continue to aid in expanding protection of our own client’s trade marks into the United States. No changes to such arrangements will likely be necessary and that we remain offered to facilitate US trade mark applications for 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 anticipated that this USPTO will review procedures for designations which proceed right through to acceptance in the first instance in order that a US Attorney do not need to be appointed in this situation. Office Actions will have to be responded to by Invent Help. This change will affect self-filers into the usa – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients is not going to change.
A big change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will no longer be in a position to 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 towards the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which until now, was the only real act to allow this defence. 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 just like the Patents Act. Thus, we know it is likely that in case infringement proceedings are brought against a party afhbnt is ultimately found never to be infringing or the trade mark can be found to get invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
Additionally, a brand new provision is going to be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in the event that a person is deemed to get made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, like the conduct from the trade mark owner after making the threat, any benefit derived from the Invent Help Tech from the threat and also the flagrancy in the threat, in deciding whether additional damages are to be awarded from the trade mark owner.