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The Inventions 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 allowed 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 guidelines of Practice in Trademark Cases as well as 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 is not really located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who may be an active member in good standing in the bar of the highest court of any state within the U.S. (including the District of Columbia as well as 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 not subjected to invalidation for reasons including improper signatures and utilize claims and encourage the USPTO to more effectively 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 a number of licensed US attorneys who will continue to help with expanding protection in our client’s trade marks into America . No changes to these arrangements is going to be necessary and that we remain offered to facilitate US trade mark applications on behalf of our local clients.

United States designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed to acceptance at the first instance to ensure that a US Attorney do not need to be appointed in this situation. Office Actions will need to be responded to by qualified US Attorneys. This change will affect self-filers into America – our current practice of engaging Inventions Ideas to respond to Office Actions on behalf of our local clients will not change.

A large change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be able 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 a cross-claim of groundless or unjustified threats. However, this may soon not be possible.

This amendment towards the Trade Marks Act will take consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only real act to permit this defense. We expect that the removal of this portion of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to become interpreted similar to the Patent A Product. Thus, we believe chances are that in case infringement proceedings are brought against a party who vafnjl ultimately found not to be infringing or the trade mark is found to be invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.

Additionally, 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 power to award additional damages in case a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider several factors, including the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner from your threat and the flagrancy from the threat, in deciding whether additional damages have to be awarded from the trade mark owner.

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