The USPTO 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 certified US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the Patent Inventhelp and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business will not be located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who may be an energetic member in good standing in the bar of the highest court of any state inside the U.S. (like the District of Columbia as well as any Commonwealth or territory of 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 not subject to invalidation for reasons like improper signatures and use claims and encourage 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 several licensed US attorneys who will still help with expanding protection of our own client’s trade marks into the usa. No changes to these arrangements will likely be necessary and we remain accessible to facilitate US trade mark applications on the part 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 to acceptance at the first instance to ensure that a US Attorney will not need to be appointed in this instance. Office Actions must be responded to by qualified US Attorneys. This change will affect self-filers into the usa – our current practice of engaging a US Attorney to answer Office Actions for our local clients will not change.
A large change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of rely on the commencement of infringement proceedings as 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 bring consistency throughout the Patenting An Idea, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which until now, was the sole act to enable this defence. We expect that removing this section of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to become interpreted comparable to vuiatc Patents Act. Thus, we feel chances are that in the event infringement proceedings are brought against a party who may be 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 new provision is going to be added to the Inventhelp Invention Prototypes, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the ability to award additional damages when one is deemed to get made unjustified threats of proceedings for infringement. The court will consider a number of factors, including the conduct of the trade mark owner after making the threat, any benefit derived by the trade mark owner from the threat and also the flagrancy of the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.