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 way 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 a certified 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 the rules regarding Representation of Others Before the Inventhelp and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal workplace is not really located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by an attorney who may be a dynamic member in good standing of the bar of the highest court of any 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 a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are certainly not subject to invalidation for reasons like improper signatures and make use of claims and allow 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 carry on and help with expanding protection of our client’s trade marks into the United States. No changes to those arrangements will be necessary and we remain available to facilitate US trade mark applications for our local clients.
United States Of America designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed right through to acceptance in the first instance to ensure that a US Attorney will not need to be appointed in cases like this. Office Actions will need to be responded to by qualified US Attorneys. This change will affect self-filers into the United States – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients will not change.
A big 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 from a cross-claim of groundless or unjustified threats. However, this will soon not be possible.
This amendment towards the Trade Marks Act will bring consistency throughout the Inventhelp Review, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the sole act to enable this defence. We expect that removing this portion of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to get interpreted similar to vuiatc Patents Act. Thus, we know chances are that in the event that infringement proceedings are brought against a celebration that is ultimately found not to be infringing or the trade mark is found to become invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
Additionally, a whole new provision will likely be added to the Patent Filing Services, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in case a person is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, including the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat and also the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.