The Inventhelp Wiki 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 permitted 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 the USA Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business will not be located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer who is a dynamic member in good standing from the bar in the highest court of the state inside the U.S. (such as the District of Columbia and then any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are certainly not subject to invalidation for reasons including 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 numerous licensed US attorneys who will carry on and help with expanding protection in our client’s trade marks into the United States . No changes to such arrangements is going to be necessary and we remain available to facilitate US trade mark applications on behalf of our local clients.
United States designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed to acceptance at the first instance so that a US Attorney will not need to be appointed in cases like this. 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 Inventor Ideas to respond to Office Actions for our local clients is not going to change.
A large 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 a cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment to the Trade Marks Act will take consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which until now, was the sole act to permit this defense. We expect that removing this portion of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to be interpreted similar to the Patent Idea. Thus, we believe it is likely that in the event infringement proceedings are brought against a party who vafnjl ultimately found never to be infringing or the trade mark is located to become invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
In addition, a whole new provision will likely be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when one is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, such as the conduct of the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat as well as the flagrancy of the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.