Many of our clients, in common with other owners of IP rights, will at some time or another have received misleading notices and “invoices” from scammers. They will be pleased to hear that the UK Intellectual Property Office (UK IPO) has made some progress in taking the fight to these scam companies.
On 19 May 2014 the UK IPO filed a claim for passing off at the Intellectual Property Enterprise Court against the persons behind two of the most blatant and persistent scam companies, trading as “Patent and Trade Mark Office” and as “Trade Mark Organisation”.
On 18 August 2014 the UK IPO reported that the persons behind these organisations, Mr Aleksandrs Radcuks and Mr Igors Villers, had admitted and settled the UK IPO’s claims and had agreed to be bound by an Order of the Intellectual Property Enterprise Court prohibiting them from further acts of passing off. (Read the full report here.)
There are further proceedings pending against another organisation engaged in similar activities. Hopefully these will also succeed.
Unfortunately, there are many similar scam companies out there, who will doubtless continue to send out official looking “notices” or “invoices” in the hope of misleading the unwary into paying entirely unnecessary or at best vastly inflated fees. Owners of IP rights need to remain on their guard.
Much of the information on official trade mark and patent databases is publicly available, at no cost, which makes the owners of registered Intellectual Property rights tempting targets for this particular type of scam.
Common examples to watch out for include:
- Following the filing of eg a national UK trade mark application, the applicant may receive “scam” letters from companies asking for payment of fees for various services, for example for filing an application for the same mark as a Community Trade Mark. These fees would be far in excess of any normal charges by a reputable firm for such a service.
- Following official acceptance of an application for an intellectual property right, the applicant may receive invitations to have the application published in an official-sounding publication. These publications have no official status and the applicant receives no benefit from having the mark published in this way, but the fees are usually extremely high.
- Following registration, the Proprietor may receive further invitations to register the trade mark, patent or design elsewhere, or to have a watching service set up in relation to the right. Again, if any service is actually supplied at all it will be at vastly inflated prices.
- Unsolicited “renewal reminders” including an official-looking “invoice” may be received well in advance of actual renewal dates.
If you have any doubts at all about the validity of any notice or invoice you receive in relation to an Intellectual Property right, before paying you should always check with your trade mark or patent attorney, or with the Institute of Trade Mark Attorneys, the Chartered Institute of Patent Attorneys, or contact the relevant official body such as the UK IPO.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.