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The Inventhelp Corporate Headquarters 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 by way of 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 principles 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 business is not located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who may be a dynamic member in good standing in the bar in the highest court of any state in 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 way of a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons such as improper signatures and use claims and allow 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 can carry on and help with expanding protection in our client’s trade marks into America . No changes to those arrangements is going to be necessary and that we remain accessible to facilitate US trade mark applications for our local clients.

United States Of America designations filed by way of the Madrid protocol will fall within 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 to ensure that a US Attorney do not need to be appointed in this situation. Office Actions must be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging Inventhelp Patent Services to answer Office Actions for our local clients is not going to change.

A big change is defined to come into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of rely on the commencement of infringement proceedings as 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 can soon not be possible.

This amendment for 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 until now, was the sole act to allow this defense. We expect that removing this section of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to be interpreted similar to the Inventhelp Commercials. Thus, we feel chances are that in case infringement proceedings are brought against a party who vafnjl ultimately found not to be infringing or perhaps the trade mark is found to get invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.

Furthermore, a brand new provision will likely be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages when one is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, including the conduct in the trade mark owner after making the threat, any benefit derived through the trade mark owner from your threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.

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