25/07/2017
Misleading notices and fake invoices from scam companies are a perennial problem for IP owners worldwide. In August 2014 I reported that the UK IPO had made some progress in the ongoing fight against such scammers in my blog Scam wars – the UK IPO fights back.
US IP law firm Leason Ellis has now joined the fight, bringing an action against the Patent and Trademark Association (PTMA). Leason Ellis allege that PTMA seeks to confuse rights owners into paying for their patents or trade marks to be listed on a private database that “provides no extrinsic value”.
Like so many of these scam invoices the PTMA solicitation looks quite official and contains details of the actual patent or trade mark registration, taken from the official database. It’s hard to know just how many people have been taken in by this sort of letter, but the PTMA online database contains basic details of over 900 registrations. There is clearly money to be made from the unwary in this way.
Even more profitable may be the unofficial renewal reminder. In 2015 a company trading as “Intellectual Property Agency Ltd” (IPAL) and its Director, Mr Harri Mattias Jonasson, were found by the Intellectual Property Enterprise Court (IPEC) to have deliberately set out to deceive the owners of intellectual property rights by sending out scam renewal notices. [Comptroller-General of Patents, Designs and Trade Marks & Another v Intellectual Property Agency Ltd & Another [2015] EWHC 3256 (IPEC)]
IPAL’s notices were held to infringe registered rights in “INTELLECTUAL PROPERTY OFFICE” and to constitute passing off. The Defendants were ordered to pay the maximum costs permitted under the IPEC cap, namely £500,000. However, IPAL had been charging many times the actual renewal fees for their services – it was mentioned in the judgment that it seemed that IPAL had made a gross profit of £1.1 million from its business.
Not all scammers are acting illegally. As Judge Hacon commented in the above case: “Charging owners of IP rights outrageous sums of money to do something they could easily and at much lower cost do themselves is not of itself unlawful” – it only becomes illegal if there is a deliberate misrepresentation which affects the customer’s decision to pay the fees.
Many scammers will include statements (usually in very small type-face) to try to protect themselves from legal action. An example I have seen recently included : “this private registration has not any connection with the publication of official registrations and is not a registration by a government organisation, and we have not any business relation yet. [I enjoyed the “yet”!] This offer for registration is not an invoice but a solicitation without obligation to pay, unless our offer is accepted.” This particular solicitation came from WPAT, who were asking over £700 for registration on a private registry. Fortunately, the client was suspicious and checked with us before paying.
We wish Leason Ellis every success in their case, but with significant profits to be made from very little work it seems unlikely that scammers will ever disappear. The best defence is to be cautious about any invoices or official-looking reminders you receive. If in any doubt, check with your trade mark or patent attorney, or with the Chartered 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 any action in reliance on it.
