Trade mark owners beware: The returning trend of trade mark scams and misleading invoices

Recognising the scam

Often the scammers will examine trade mark registers and identify recently registered trade marks or marks approaching renewal, and will use the freely available information on the respective register to contact you as the trade mark owner.

This is why the scam invoice may initially appear quite convincing. It will likely include your trade mark number, filing date, renewal date and other identifying information.

It’s likely that the invoice will actually be a misleading invitation to register in a private register or directory – which of course confers no rights whatsoever.

Key indicators that this invoice is indeed a scam or intentionally misleading invoice include:

• The invoice contains terms and conditions, usually at the bottom of the document, that explain it’s in fact a solicitation without obligation to register the mark on a private website.

• The logo or name at the top of the invoice is, on review, an imitation of an official entity. This is usually done by changing a word or letter (e.g. EUOIP).

• An attempt to confer a sense of urgency, for example the use of ‘IMPORTANT’ or ‘URGENT’ usually in red and bold at the top of the invoice.

• An inflated invoice amount, disproportionate to fees usually paid.

• The fact that you, instead of your representative (if applicable), are receiving an invoice.

Trade mark scams: Other considerations

Fraudsters have also been known to target rights holders for designs and patents, and also domain holders, and will send invoices to owners both nationally and internationally.

Sadly, it appears that this issue is not going to disappear anytime soon. Indeed, fraudsters appear to be taking bolder and more logical actions, for example issuing an invoice at just the right time, such as renewal or registration. This can be particularly dangerous as, of course, the receipt of such an invoice seems perfectly sensible at that moment.

If in doubt, the WIPO, EUIPO and UKIPO have created respective lists of known offenders, which you can review your invoice against.

The best action you can take as a rights holder is to be aware of the scam and know when you’re receiving a misleading invoice. If you receive an invoice by a scam or unofficial body, you should ignore the demand or seek advice if unsure.

Trade mark scams: How we can help

An easy way to spot that your invoice is a scam or misleading one is a scenario where you receive the invoice, rather than your representative. There are very few circumstances where an intellectual property office would directly contact a represented right holder. However, genuine invoices will always come from your registered address for service.

Walker Morris offers a full IP & Trade Mark solution for your business, which includes the appointing of ourselves as your representative at the UKIPO.

In any case, should you receive a suspicious invoice and you are unsure of its credibility – or require IP assistance in general – please do not hesitate to contact Alan, Sarah or Sakura who will gladly assist.