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 allowed to submit trade marks directly with the USPTO without engaging a certified 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 as well as the rules regarding Representation of Others Prior to the Patent A Product to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer who may be a dynamic member in good standing from the bar from the highest court of any state inside the U.S. (such as the District of Columbia and any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by way of a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants usually are not subjected to invalidation for reasons including improper signatures and utilize claims and enable 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 numerous licensed US attorneys who can carry on and help with expanding protection of our own client’s trade marks into the United States. No changes to such arrangements will be necessary so we remain accessible 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 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 do not need to be appointed in this situation. Office Actions will have 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 respond to Office Actions on the part of our local clients is not going to change.
A large 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 as a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this may soon not be possible.
This amendment for the Trade Marks Act brings consistency across the Inventhelp Invention Idea, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the only real act to permit this defence. We expect that the removal of this portion of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to be interpreted like the Patents Act. Thus, we feel chances are that in the event infringement proceedings are brought against a party who fwhdpo ultimately found never to be infringing or even the trade mark is found to be invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.
Additionally, a brand new provision will be added to the Invention Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. The court will consider several factors, such as the conduct of the trade mark owner after making the threat, any benefit derived by the trade mark owner from the threat and the flagrancy from the threat, in deciding whether additional damages should be awarded against the trade mark owner.