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29th October 2019

Trade mark scams and how to avoid them

By Matthew Pryke

This article was co-written by Hugo Cox, a paralegal in the Commercial and Tech team.

For many years, trade mark owners have been the subject of various scams demanding payment for a range of unnecessary services. The scammers make use of information about trade marks which is available on the public databases of the trade mark offices. Typically, they send the trade mark owners a letter and an invoice. To date, these scams have shown no sign of going away and it is advisable for trade mark owners to pay attention.

In short, if you are a trade mark owner and receive an invoice which does not come from your legal representative, you should not pay the invoice or respond. Instead, your first step should be to contact your legal representative to check whether the communication is genuine.

If it is not genuine, you can ignore it – and, if you wish, report it to the UK Intellectual Property Office and Action Fraud. They, along with the Advertising Standard Authority and international organisations, take legal action against these organisations.

There are two main types of misleading mail:

  1. Fake registration

This is the most common form of misleading mail. It normally occurs shortly after a trade mark application has been published by the relevant trade mark office. The misleading organisation contacts the trade mark owner with an invoice for adding the mark onto a fake register. Such registers are operated, for example, by the World Organization for Trademarks (WOTRA) and the Intellectual Property Organisation Service (IPOS). Publication in these registers is worthless: it has no legal effect and all trade mark offices publish trade marks in their official registers at no additional cost.

  1. Renewals

This is where misleading organisations will approach trade mark owners offering to renew their trade marks at excessive fees. If you are a trade mark owner, the relevant office will always contact you or your representative when it is time to renew it.

There have been other types of trade mark scam and there is currently some evidence of Brexit-related scams, where EU trade mark owners are being contacted and encouraged to file UK trade mark applications. Currently, this would seem unnecessary as the UK government has recently committed to generating replacement UK rights in the event of Brexit, at no charge.

This is no doubt not the end of the story – so it is advisable for trade mark owners to remain alert and check trade mark communications with their legal representatives.

Useful links:

Trade mark scams and how to avoid them

Have a question? Contact Matthew

Have a question? Contact Matthew

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