A War on Trade Mark Cons

Now is the time for spring cleaning and to take control over your junk mail. Anyone who has registered a trade mark in recent years will be all too familiar with the scam notices that follow asking for additional fees to be paid. What typically happens is that, after you have registered your mark, you receive a notice which looks like a formal invoice requesting payment. If you read the small print, it will often say something like “upon payment your trade mark will be entered on the XYZ trade mark register”. This might very well be true, but being on the XYZ register doesn’t actually mean anything or protect your mark in any way.

The Institute of Trade Mark Attorneys released a report recently saying that this issue could cost small businesses some £1.25m per year and that there has been a rise of 45% of instances between 2013 and 2014.

This seems to be replacing the previous practice of false renewal reminders (down 29%), against which the Advertising Standards Authority and the UK Intellectual Property Office have been having some success in recent months.

However, there is some difficulty in taking action against the unofficial trade mark registers, as they are potentially providing exactly what they claim to be. The best way to combat this is therefore awareness.

Our top tips to wage war on these scams are:

  • If you have a trade mark attorney or solicitor (agent) acting for you, almost every piece of official correspondence should be sent to them and not directly to you, so be suspicious immediately when you receive a notice direct.
  • If in doubt, show the notice to your agent, as they should be able to tell you within moments of seeing a notice if it is unofficial.
  • It may be in legalese, but read the small print – many notices aren’t dishonest and tell you exactly what they will do for their fee (i.e. very little).
  • Contact the UK Intellectual Property Office to report the scam or fraud, as they (in conjunction with Action Fraud) keep records to help them combat these problems.
  • Finally, simply throw the scam notices straight into the bin!

Alison Marshall is an experienced lawyer and business advisor providing Intellectual Property and IT advice to SMEs in Fife, Edinburgh and across Scotland.