The UK Intellectual Property Offices warns trade mark owners to not be fooled by “‘renewal’ notices to holders of UK registered patents and trade marks offering to renew the rights for fees greatly in excess of the official renewal fees.” See Warning.
Don’t be fooled
If you are a trade mark owner, the chances are you have been contacted directly by organizations purporting to extend protection of your trade mark to Europe, offering entry on what sounds like an official sounding register or else offering to renew your registrations. These communications often take the form of pro-forma invoices and tend to look both bona fide and official. Nothing could be further from the truth, and the unsuspecting trade mark owner risks being misled into making excessive payments to these organizations.
On August 18, 2014, the UK Intellectual Property Office announced success in actions for passing off against two of the most blatant offenders, “Patent and Trademark Office” and “Patent and Trade Mark Organisation”, and the people behind these organizations. See Aug. 18, 2014 Announcement. The claims were admitted and settled and the perpetrators have agreed to be bound by an Order of the Intellectual Property Enterprise Court prohibiting them from further acts of passing off. Furthermore, a substantial payment has been made to the IPO in respect of their legal costs. Further proceedings are pending against another organization engaged in similar practices.
The Advertising Standards Authority has also been busy, ruling against three further companies in relation to misleading invoices.
Don’t Pay
If you receive an unsolicited invitation or invoice, DO NOT PAY IT until you have checked to see what services are being offered, you have requested them, and if it is from an official source. These companies are not linked to any government or Community institution. You are NOT obliged to pay their fees. All brand owners are also well advised in the first instance to speak with their UK or CTM trade mark counsel on receipt of such demands, who will be able to provide immediate confirmation of whether they are from a bona fide source.
This article was prepared by Clare Jackman of Norton Rose Fulbright’s London office (+44 20 7444 2235 and clare.jackman@nortonrosefulbright.com).
