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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 way of a Notice of Idea Help on 15 February 2019, will affect foreign applicants who would otherwise be allowed to submit trade marks directly with the USPTO without engaging a licensed US attorney.

The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Before america Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney that is an active member in good standing in the bar of the highest court of the state inside the U.S. (including the District of Columbia and 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 inside 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 a number of licensed US attorneys who will continue to assist with expanding protection in our client’s trade marks into the usa. No changes to those arrangements will be necessary so we remain accessible 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 in the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed right through to acceptance on 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 Inventhelp Locations. 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 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 being 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 can soon not be possible.

This amendment to the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only real act to enable this defence. We expect that the removing of this section of the Trade Marks Act allows the “unjustified threats” provisions of the Trade Marks Act to get interpreted like the Patents Act. Thus, we believe it is likely that in the event infringement proceedings are brought against a party afhbnt is ultimately found to not be infringing or the trade mark is located to be invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.

Additionally, a new provision is going to be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages when an individual is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider several factors, such as the conduct from the trade mark owner after making the threat, any benefit derived through the Inventhelp Inventions Store from your threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.