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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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be allowed to submit trade marks directly with the USPTO without engaging a certified 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 and the rules regarding Representation of Others Before the How To Obtain A Patent to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who is a dynamic member in good standing from the bar from the highest court of any state in the U.S. (like 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 way of a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as improper signatures and use claims and enable 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 a number of licensed US attorneys who will still aid in expanding protection in our client’s trade marks into america. No changes to such arrangements will be necessary so we remain available to facilitate US trade mark applications on behalf of our local clients.

U . S . designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed through to acceptance at the first instance in order that a US Attorney do not need to be appointed in cases like this. Office Actions will have to be responded to by qualified US Attorneys. 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 will not change.

A big change is defined in the future 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 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 not be possible.

This amendment to the Trade Marks Act will take consistency over the How To Start An Invention, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the sole act to allow this defence. 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 get interpreted just like the Patents Act. Thus, we know it is likely that in case infringement proceedings are brought against an event who fwhdpo ultimately found not to be infringing or the trade mark is located to get invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.

Furthermore, a whole new provision will likely be included in the Innovation, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when a person is deemed to possess made unjustified threats of proceedings for infringement. The 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 through the threat as well as the flagrancy of the threat, in deciding whether additional damages have to be awarded from the trade mark owner.

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