Unsolicited requests in intellectual property and misleading invoices
Many of you will be aware of various scams involved in intellectual property, even if you have only a small IP portfolio. It is high profile enough to have its own entry on the Wikipedia website.
As applicant’s data is publicly available, it is easy for unscrupulous companies to scrape this data and send out unsolicited requests. These can look like they have come from an official IP organisation or, a more recent trend, a legitimate law firm (Stern Young & Partners is one doing the rounds currently). They usually look like invoices with full details on how to pay. If you read through the small print then they are not actual invoices and usually invitations to:
a) enter your trade mark on to a private official-sounding register, that has no legal value whatsoever; or
b) file a trade mark application in another country (often UK applicants get offers to file EU applications and vice-versa, for example) at overinflated prices by unqualified, unregulated firms; or
c) file renewal requests for your trade mark registrations usually way ahead of a renewal date (so before reminders may be received from your regular Trade Mark Attorneys), again at overinflated prices; or
d) unsolicited watch notices inviting oppositions to be filed, where no analysis on the strength of a case has been carried out; or
e) unsolicited assistance with responding to Provisional Refusals in designations of International Registrations.
In mitigation, the last two examples are usually marketing attempts by foreign law firms looking to drum up new businesses and are usually sent to professional representatives, albeit we find them a pain as we receive so many and do not need them.
Beware of the post
As applicant e-mail addresses are not usually on public record, these requests tend to come by post. In this day, this can actually look more official because we receive less and less through the mail and the COVID-19 situation has further decreased postal communications. It can also enable these “invoices” to bypass the people involved in trade marks and end up with the team in accounts who can inadvertently process payment.
What to do if you receive an unsolicited request or misleading invoice?
Your Trade Mark Attorney would be happy to have a quick look and tell you if something is a scam.
You can also check to see what services are being offered. If you need them, do you need them from this organisation?
Is it from an official source? If you have Trade Mark Attorneys representing you then they should receive trade mark correspondence from the likes of the UKIPO as your Address for Service. This is not always the case and sometimes correspondence is sent by other Intellectual Property Offices or by courts directly to trade mark owners so it is good to be vigilant as you would not want anything requiring action to fall through the cracks. In recent months, I’ve had clients directly receive renewal reminders from the Kenyan Registry and documents from the Slovenian courts.
Remember you are not obliged to pay any fees to these companies that are not linked to any government or EU institution.
In the UK, the UKIPO have set up a dedicated e-mail address to monitor these: email@example.com. We can, of course, make these reports on a client's behalf. The UKIPO want to receive an electronic copy of both the invoice and the envelope it was received with and, if one was received, a copy of the pre-paid return envelope.
What can you do if you have paid one of these organisations?
UK citizens and businesses that have been conned into paying can contact Action Fraud. This is an online reporting portal operated by the City of London Police.
They cannot guarantee a response by law enforcement or that you will get your money back, but it is useful if the invoice and the envelope it was received with and, if one was received, a copy of the pre-paid return envelope are retained in a plastic sleeve and handled as little as possible.
What else is being done?
Various Intellectual Property Offices around the world have made awareness of this issue important.
In the UK, the UKIPO have been successful in legal action against private organisations offering official-sounding trade mark renewal services. Complaints have also been upheld with the Advertising Standards Authority.
When it comes to organisations operating in different countries then the situation becomes more difficult.
What more can be done?
Continued education and awareness helps, but clearly given the number of these organisations out there, it is still a lucrative business to be in. This is not entirely surprising given the growing number of IP applications year-on-year.
Cooperation between Government bodies, possibly led by their respective IPOs and coordinated by WIPO, may enable a more global and consistent approach to be taken so that these organisations can be closed down promptly and sufficient deterrents can be put in place so they do not crop up again in another form shortly afterwards. However, there may need to be legislative changes to give more power to the authorities.
Can we take applicant information out of the public domain?
GDPR has resulted in domain name registrant details being hidden from public view. The correct ownership of intellectual property assets is more fundamental than with domain names but is it really necessary to have full address details on a Register? Particularly, if the owner is professionally represented? Taking away address information would represent a way to stop these organisations scraping the Registers and mass mailing owners.
For now, we urge all trade mark owners to remain vigilant, query everything and rely on your expert Trade Mark Attorneys for guidance.