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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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would 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 and also the rules regarding Representation of Others Ahead of the Patent Companies to require applicants, registrants, or parties to a 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 get represented by legal counsel who is a dynamic member in good standing in the bar of the highest court of a state within the U.S. (such as the District of Columbia as well as any Commonwealth or territory from 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 in the public that U.S. registrations that issue to foreign applicants are certainly not subject 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 can continue to help with expanding protection in our client’s trade marks into the United States. No changes to these arrangements is going to be necessary so we remain available to facilitate US trade mark applications for our local clients.

United States designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed right through to acceptance at the first instance in order that a US Attorney need not be appointed in cases like this. Office Actions will need to be responded to by qualified US Attorneys. This transformation 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 ahead 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 from a cross-claim of groundless or unjustified threats. However, this will soon not be possible.

This amendment to the Trade Marks Act brings consistency throughout the How To Patent An Idea, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only act to enable this defence. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to become interpreted like the Patents Act. Thus, we know chances are that in the event infringement proceedings are brought against a celebration who fwhdpo ultimately found not to be infringing or perhaps the trade mark is found to get invalid, the trade mark owner will be deemed to possess made unjustified or groundless threats.

In addition, a whole new provision will be included in the New Ideas For Inventions, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the ability to award additional damages in the event that a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider several factors, including the conduct in the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat as well as the flagrancy in the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.