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The USPTO 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 means 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 an authorized US attorney.

The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and the rules regarding Representation of Others Prior to the I Want To Patent My Idea to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not really located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney that is an energetic member in good standing from the bar from the highest court of the state in the U.S. (including the District of Columbia and 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 within the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons such as improper signatures and make use of 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 will continue to help with expanding protection in our client’s trade marks into america. No changes to such arrangements is going to be necessary and that we remain accessible to facilitate US trade mark applications on behalf of our local clients.

U . S . designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed to acceptance in the first instance so that a US Attorney will not need to be appointed in this situation. Office Actions will need 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 answer Office Actions for our local clients will not change.

A big change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will not be able 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 coming from a cross-claim of groundless or unjustified threats. However, this may soon no longer be possible.

This amendment to the Trade Marks Act brings consistency over the Inventhelp Headquarters, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the only act to enable this defence. We expect that the removal of this portion of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to become interpreted just like the Patents Act. Thus, we believe it is likely that in the event infringement proceedings are brought against an event who fwhdpo ultimately found never to be infringing or perhaps the trade mark is found to become invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.

Furthermore, a whole new provision will likely be added to the Patent An Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages when one is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, including the conduct in the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat and the flagrancy from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.

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