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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 deceptive applications by self-filers. The proposed changes, published by way of a Notice of I Have An Idea For An Invention 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: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and also the rules regarding Representation of Others Before america Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of work will not be located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer who is a dynamic member in good standing of the bar from the highest court of any state inside the U.S. (including 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 by 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 including improper signatures and use claims and allow 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 can continue to assist with expanding protection of our own client’s trade marks into america. No changes to such arrangements will likely be necessary and that we remain accessible to facilitate US trade mark applications on behalf of our local clients.

United States designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed through to acceptance on the first instance in order that a US Attorney will not need to be appointed in cases like this. Office Actions must be responded to by Invention Advice. This modification will affect self-filers into the usa – our current practice of engaging a US Attorney to answer Office Actions on the part of our local clients will never change.

A huge change is defined to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be in a position 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 from the cross-claim of groundless or unjustified threats. However, this can soon no longer be possible.

This amendment for the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the only act to permit this defence. We expect that removing this area of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to get interpreted like the Patents Act. Thus, we believe chances are that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found to not be infringing or perhaps the trade mark is located to be invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.

Furthermore, a new provision will be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages when an individual is deemed to get made unjustified threats of proceedings for infringement. The court will consider several factors, including the conduct in the trade mark owner after making the threat, any benefit derived through the Inventhelp New Inventions through the threat as well as the flagrancy in the threat, in deciding whether additional damages should be awarded from the trade mark owner.