The Inventhelp Company Headquarters 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will 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 as well as the rules regarding Representation of Others Before the USA Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not really located within America or its territories (hereafter foreign applicants, registrants, or parties) to become represented by an attorney that is a dynamic member in good standing of the bar of the highest court of the state in the U.S. (such as 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 way of 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 make use of 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 numerous licensed US attorneys who will still aid in expanding protection in our client’s trade marks into the USA . No changes to these arrangements will likely be necessary and we remain offered to facilitate US trade mark applications for our local clients.
U . S . designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed to acceptance at the first instance so that a US Attorney need not be appointed in this situation. Office Actions must be responded to by qualified US Attorneys. This transformation will affect self-filers into the United States – our current practice of engaging Inventhelp Headquarters to answer Office Actions on behalf of our local clients will not change.
A huge change is placed in the future 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 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 to the Trade Marks Act brings consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only act to enable this defense. We expect that the removing of this area of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to get interpreted similar to the How To Get A Patent. Thus, we know it is likely that in case infringement proceedings are brought against a celebration who vafnjl ultimately found never to be infringing or perhaps the trade mark is located to get invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
Additionally, a brand new provision will 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 one is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, such as the conduct of the trade mark owner after making the threat, any benefit derived by the trade mark owner from your threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.