The Product Idea 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 will otherwise be allowed to file trade marks directly with the USPTO without engaging a licensed 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 Before America Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work will not be located within the United States 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 the state within the U.S. (including 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 by way of a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subjected to invalidation for reasons like improper signatures and utilize 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 several licensed US attorneys who will carry on and 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 offered to facilitate US trade mark applications for our local clients.
United States Of America designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed through to acceptance at the first instance in order that a US Attorney will not need to be appointed in this situation. Office Actions will have to be responded to by qualified US Attorneys. This transformation will affect self-filers into the United States – our current practice of engaging How To Patent An Idea Or Product to respond to Office Actions on behalf of our local clients will not change.
A big change is defined to come into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings as a defense 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 will soon not be possible.
This amendment towards the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the only real act to enable this defense. We expect that removing this section of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to be interpreted similar to the Inventhelp Innovation. Thus, we know chances are that in case infringement proceedings are brought against an event who vafnjl ultimately found never to be infringing or perhaps the trade mark can be found to get invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
Additionally, a 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 energy to award additional damages in case a person is deemed to get made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, such as the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat and also the flagrancy from the threat, in deciding whether additional damages should be awarded from the trade mark owner.