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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 will otherwise be allowed to file 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 and the rules regarding Representation of Others Ahead of the Inventhelp Inventor Service to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business will not be located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is a dynamic 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 by a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not subjected to invalidation for reasons such as improper signatures and make use of claims and allow 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 who can continue to aid in expanding protection in our client’s trade marks into the usa. No changes to these arrangements is going to be necessary and we remain available to facilitate US trade mark applications for our local clients.

U . S . designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed right through to acceptance at the first instance so that a US Attorney do not need to be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This modification will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions for our local clients will never change.

A large change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings as 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 can soon not be possible.

This amendment towards the Trade Marks Act brings consistency across the Inventhelp Intromark, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the sole act to allow this defence. We expect that the removing of this area of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to become interpreted similar to the Patents Act. Thus, we know chances are that in the event that infringement proceedings are brought against a celebration who fwhdpo ultimately found not to be infringing or perhaps the trade mark is found to be invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.

In addition, a brand new provision is going to be put into the New Invention Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages when a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider a number of factors, like the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat and the flagrancy in the threat, in deciding whether additional damages are to be awarded from the trade mark owner.

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