A brand is a major asset of any business and can help achieve competitive advantage. In recent years businesses have become more and more alert to the need to protect their goodwill. As an illustration of this, there was a 19% increase in trade mark applications between 2012 and 2013.
Unfortunately, fraudsters are also becoming increasingly aware of the importance of brand strategy. Consequently, we have seen a large rise in unscrupulous organisations seeking to exploit the large sums dedicated by owners to protecting their rights. This has led to a number of businesses failing foul of the so called 'scam invoices.'
In general, there are four types of scam invoices:
- those requesting payment of official filing fees
- those offering to renew your trade mark with the Registry
- those offering to 'upgrade' your national application to a Community Trade Mark Application
- those offering to list to your trade mark on their own 'trade mark database'
Upon filing a trade mark application (which could be UK or CTM) brand owners will often receive an 'invoice' from an organisation requesting payment of a sum by way of filing fees for the application (which of course the applicant will have already paid).
The organisation will pick a name that looks, to the layperson, as if they are actually the trade mark registry, for example (and we have made up this example) something like ‘European Trade Mark Office’.
This will feature at the top of the 'invoice' and will then require payment of a certain sum, the idea is that the brand owner pays the 'invoice' assuming that it is paying the relevant official fees for its application. In actual fact upon reading small-print it becomes apparent that they are not an official body at all and are simply offering (paraphrased) ‘the opportunity to be featured in the [organisation name]‘s journal of trade marks’. Such journals being of zero worth to a trade mark owner.
These are perhaps the most common type of 'misleading invoice' and include a reminder that the trade mark is due to expire, together with an offer to renew the mark on the owner's behalf. These invoices appear to be sent by the Registry or on its behalf as one of its registered affiliates. They may also include a barcode and other detailed information regarding the trade mark in question, misleading businesses as to its authenticity. In reality, all this information has been taken from a simple search of the IPO/OHIM's website.
These invoices will request payment of amounts well in excess of the official renewal fee. Whilst they will (allegedly) renew the registration there is no obligation to use such services, instead brand owners should renew their registrations direct with the Registry, through their IP representatives (likely a Solicitor of Trade Mark Attorney) or through a dedicated renewal service provider.
Community Trade Mark 'upgrade'
Another common type of 'misleading invoice' is that of the CTM 'upgrade'. This involves the organisation sending 'invoices' to national trade mark owners offering to upgrade their mark to a Community Trade Mark.
The invoice and covering letter look very professional, accounts teams will often simply pay these out on the assumption that they are settling the official fees of their application. The shrewder accounts team will, however, review the letter and see that the offer is simply to file an application to the OHIM at a cost of around £500, again they may pay the same, seeing it as a cheap way to obtain a CTM. However, all that is actually being offered is for the organisation to copy and paste the details of the trade mark owner's national mark on to a CTM application form to be returned to the trade mark owner for filing (the trade mark owner will also have to pay the official fees).
The final type of 'misleading invoice' is, similar to the 'filing fee' invoices mentioned above. In this instance the trade mark owner is offered the chance to register its trade mark with an organisation not affiliated with the IPO or any other official Registry. The trade mark owner's mark is then listed online within the 'unofficial database'. However, these 'unofficial databases' offer no discernable benefit and give the trade mark owner no enforceable rights beyond those that they already possess.
How to protect yourself
If you have used professional representatives to file your trade mark applications then they will be listed as your representatives with the IPO/OHIM (as appropriate). As a result all correspondence (which would include payment requests, renewal details etc) will be sent by the IPO/OHIM to the representatives, not to you directly. Your representative will then liaise with you to action such requests where appropriate. If in any doubt about the authenticity of an 'invoice' that you receive we would suggest contacting your representatives for clarification.
In addition, a number of websites have information on what to look out for if you receive an invoice, including the UK IPO and the Institute of Trade Mark Attorneys. In addition, the Advertising Standards Agency (ASA) and Trading Standards have recently joined forces, with Trading Standards agreeing to take legal action under consumer protection law. We hope that this will bring an end to these 'misleading invoices'.
If you don't currently have representatives then do feel free to get in touch with one of our specialist intellectual property solicitors who will be able to assist you with any misleading invoices you have received and/or with our taking over representation of your trade marks.