Author: Maria Silvia Martinson, lawyer at RestMark METIDA
For several years now, trade mark and patent owners have been the addressees of scam notices which are confusingly similar to the formal documents issued by different intellectual property organisations around the world. CTM owners, international trade mark owners and domestic trade mark owners all face this problem. Even local intellectual property authorities are drawing attention to the issue in order to help IP owners avoid making a mistake of paying the scammers large amounts of money.
Usually the documents are made to look very authentic and without more thorough examination can easily pass off as the originals. The information regarding the trade mark or patent (owner, application date etc) whose owner it is issued to is accurate as the scammers have done their homework. The invoices can even arrive close to actual due dates.
However, it is highly important to keep an eye on the details. The scammers almost never use a legitimate intellectual property organisation name, but modify it slightly. For example, the frequently used International Trademark and Patent Service (ITPS) is a fictional name and does not exist as an IP institution. Interestingly enough, in many cases a tiny disclaimer is placed at the bottom of the notice or invoice, which states that the invoice does not have to be paid and that it is not a document issued by an IP authority.
Additionally, the fees listed in the invoices can sometimes be 6 or more times higher than the average fee requested by IP institutions or patent attorneys. Therefore a very significant sum is cause for alarm. Generally, not even a fraction of the fees collected by scammers is forwarded to the relevant institutions, therefore the sums addressees have paid for renewing their trade marks or for other reasons, need to be paid again to the IP authorities.
In November 2015, a Swedish-Seychelles scammer delivering fake invoices was found liable in the United Kingdom for trade mark infringement and passing off as he used a highly similar logo to the UK’s Intellectual Property Office trade mark in the invoices. Strangely, from the amount of £1,334,234 the scammer collected from right holders, he actually paid the relevant IP institutions £227,724 (which is around 17% of the collected money) to renew their rights. Like stated before, a scammer paying the actual fees is a rarity. Therefore the profit he made from the scamming was £1,106,510. Even after the court decision, he ended up with around £600,000 of profit, since the case in the United Kingdom was decided by the Intellectual Property Enterprise Court and £500,000 was the maximum amount the judge could order the scammer to pay.
In conclusion, it is highly important to keep an eye on the information regarding your trade mark. You should be aware of the institutions where your trade mark is registered and also read all the invoices you receive very carefully. After a mistake of paying to the scammers has already been made, it is almost impossible to get the money back. If the suspicion still remains, call your patent attorney or the IP institutions you trust and ask them for additional information.
See examples of fake invoices below. All information regarding the receivers of the invoices has been removed.