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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 means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to submit trade marks directly with the USPTO without engaging a licensed 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 as well as the rules regarding Representation of Others Prior to the Inventhelp Headquarters to require applicants, registrants, or parties to a 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 become represented by a lawyer that is an energetic member in good standing from the bar from the highest court of the state inside the U.S. (such as the District of Columbia as well as any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants usually are not subject to invalidation for reasons such as improper signatures and make use of claims and enable the USPTO to better 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 that will still assist with expanding protection in our client’s trade marks into america. No changes to such arrangements is going to be necessary so we remain offered to facilitate US trade mark applications on the part of our local clients.

United States designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated that the USPTO will review procedures for designations which proceed right through to acceptance at the first instance in order that a US Attorney do not need to be appointed in cases like this. Office Actions will need to be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients will not change.

A large change is placed in the future 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 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 no longer be possible.

This amendment towards the Trade Marks Act will take consistency throughout the Inventhelp Inventions Store, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to permit this defence. 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 get interpreted like the Patents Act. Thus, we know it is likely that in the event infringement proceedings are brought against a celebration who fwhdpo ultimately found never to be infringing or the trade mark is located to get invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.

Additionally, a whole new provision will likely be added to the Inventhelp Innovation, 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 one is deemed to have made unjustified threats of proceedings for infringement. The court will consider several factors, such as the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat as well as the flagrancy in the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.

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