The Inventhelp New Products 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 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 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 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 United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel who may be an energetic member in good standing from the bar in the highest court of a state in the U.S. (like the District of Columbia and then any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are certainly not susceptible to invalidation for reasons such as improper signatures and make use of claims and enable 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 numerous licensed US attorneys that will still aid in expanding protection of our own client’s trade marks into the usa. No changes to such arrangements will be necessary so we remain accessible to facilitate US trade mark applications on behalf of our local clients.
U . S . designations filed through the Madrid protocol will fall within the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed right through to acceptance on the first instance in order 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 change will affect self-filers into america – our current practice of engaging Inventhelp Pittsburgh Headquarters to answer Office Actions on behalf of our local clients will never change.
A large change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer 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 may soon no longer be possible.
This amendment towards the Trade Marks Act will take consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the only real act to permit this defence. We expect that removing this area of the Trade Marks Act allows the “unjustified threats” provisions of the Trade Marks Act to become interpreted like the How To Get A Patent For An Idea. Thus, we believe it is likely that in the event infringement proceedings are brought against a celebration who vafnjl ultimately found not to be infringing or even the trade mark is located to be invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
Furthermore, a brand new provision is going to be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages in the event that an individual is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, like the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat and the flagrancy from the threat, in deciding whether additional damages have to be awarded against the trade mark owner.