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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 would otherwise be permitted to file trade marks directly with the USPTO without engaging an authorized US attorney.

The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and the rules regarding Representation of Others Prior to the Invention Ideas to require applicants, registrants, or parties to your proceeding whose domicile or principal place of business is not really located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer that is a dynamic member in good standing in the bar from the highest court of the state in the U.S. (including the District of Columbia and then 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 in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use 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 several licensed US attorneys who can carry on and assist with expanding protection of our client’s trade marks into the usa. No changes to those arrangements is going to be necessary so we remain offered to facilitate US trade mark applications on behalf of our local clients.

United States designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated that this 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 this instance. 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 for our local clients is not going to change.

A huge change is defined to come into force for Australian trade mark owners, who, from 25 February 2019, will not be able 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 will bring consistency across the Find A Patent Attorney, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the only real act to permit 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 feel chances are that in the event that infringement proceedings are brought against an event who fwhdpo ultimately found never to be infringing or the trade mark can be 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 included in the Innovation, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in case an individual is deemed to get made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, such as the conduct in the trade mark owner after making the threat, any benefit derived by the trade mark owner from the threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.

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