24/06/2013
An increasingly common type of money-seeking “scam” is the sending of unsolicited mail to the owners of intellectual property rights, in particular to the owners of trade marks, demanding fees for unnecessary and unofficial services. Read on to check that you are not caught unawares.
The Proposal
The companies involved monitor public databases, such as the UK Intellectual Property Office (UK IPO), and when a UK trade mark application is filed, for example, send out an offer to apply for a Community Trade Mark for the same mark, or an offer to enter the details of the application onto an official-sounding register or publication. The register or publication may exist, but they have no official status. Such companies will also monitor trade mark registrations, and some time before the renewal deadline will send out an offer to renew the registration for vastly inflated fees.
Very often this type of mail comes in an “invoice” format, making customers think they are obliged to pay the fee. There is usually a statement somewhere on the “invoice” to the effect that it is not actually a bill, but this tends to be in easily-overlooked small type. The companies involved hope that this type of mail may simply be passed to the accounts department and be paid automatically.
The Authorities
In a recent decision, the Council of the Advertising Standards Authority upheld a complaint about this type of renewal “invoice”. You can find a report of this case on the UK IPO website at http://www.ipo.gov.uk/warning.htm. The UKIPO, as owner of its own trade marks, has also been in receipt of the same misleading letters and has taken action to draw attention to them. On the same page listed above, you can find examples of “invoices” which have been sent to the UK Office, together with the Office’s response to such mail.
The World Intellectual Property Office (WIPO) has also published a list of companies who are sending out this type of mail at http://www.wipo.int/pct/en/warning/pct_warning.html. This list is updated as WIPO becomes aware of more companies sending this type of mail, but it will never be exhaustive.
Although misleading “invoices” may breach advertising standards, this does not mean that there is an easy redress for companies who have already paid them. Even though the services offered are of little or no value to the trade mark owner, the courts are generally reluctant to interfere with the freedom of an individual or a business to enter into a commercial bargain, even an unfavourable one. This is often compounded by the fact that the company sending out the mail may be registered offshore, or in an Eastern European country. It is therefore important that anyone in your company who might receive this type of mail is alerted to the risk of misleading “invoices”.
Examples
A number of our clients have also asked us for advice on correspondence they have received, apparently from an overseas domain name registry, warning of an application for a conflicting domain name. These “warnings” usually come via e-mail and tend to be from Asian domain name organisations. Below is an example of the type of wording these emails usually include:
“Dear CEO,
We are a domain name registration and dispute organization in Asia, who mainly deal with global companies’ domain name registration and internet intellectual property right protection in Asia. Currently we have a very important issue that we need to confirm with your company.
On [date], we received an application formally from one company named [Company X] that wanted to apply for the Internet Trademark “[YOUR TRADE MARK]” and some domain names from our organization.
During our preliminary investigation, we found that these domain names, keyword and Internet Trademark are identical with your trademark. These days we are dealing with this case, we were wondering whether you consigned [Company X] to register these domain names with us? If it is true, we will complete the registration of these domain names. Do you know this company? Currently, we have postponed this application of this company temporarily. In order to deal with this issue better, please contact us by telephone or email as soon as possible.
In addition, we hereby affirm that our time is limited for dissent application. If your company files no dissent within the time limit, we will unconditionally approve the application submitted by [Company X].
(PS: If you are not in charge of this matter, please transfer this email to appropriate dept.)
Best Regards”
Our recommendation is that you should never respond to or even acknowledge receipt of this type of e-mail. If you do, the domain name “registry” may attempt to make you pay to register the domain names yourself and you are also likely to become a target for other scammers.If you have any doubts about an invoice or warning letter you have received about any Intellectual Property matter, please always feel free to check with us. You may also wish to alert Trading Standards.
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.
