The Invention Ideas 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 through 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 licensed US attorney.
The NPR Summary reads: The Usa 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 Before America Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not really located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel who may be a dynamic member in good standing in the bar of the highest court of the state inside 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 inside the public that U.S. registrations that issue to foreign applicants are certainly not subjected to invalidation for reasons such as improper signatures and use 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 numerous licensed US attorneys who can carry on and aid in expanding protection of our own client’s trade marks into the United States . No changes to such arrangements will likely be necessary so we remain accessible to facilitate US trade mark applications on the part of our local clients.
United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is anticipated that the USPTO will review procedures for designations which proceed right through to acceptance at the first instance to ensure 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 Inventhelp Number to answer Office Actions on the part of our local clients will not change.
A big change is defined 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 defense 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 for the Trade Marks Act will bring consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only act to enable this defense. We expect that the removal of this portion of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to be interpreted similar to the Patent Ideas. Thus, we know it is likely that in the event that infringement proceedings are brought against a party who vafnjl ultimately found not to be infringing or the trade mark is found to become invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
In addition, a new provision is going to be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages in the event that a person is deemed to have made unjustified threats of proceedings for infringement. The court will consider several factors, like the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner through the threat and also the flagrancy of the threat, in deciding whether additional damages have to be awarded against the trade mark owner.