So you have lodged your trade mark application, received your Notice of Acceptance from IP Australia and are about to put up your feet when you receive a letter in the mail. Not just any letter, it’s an invoice to the amount of $2,000 to be paid in relation to your Australian trade mark. You have just been the target of a trade mark scam.
And you are not the only one. It is becoming increasingly common for trade mark applicants to receive invoices for thousands of dollars from unknown organisations overseas and within Australia and it is important for you to be wary of these types of letters. It’s important that you learn to recognise scams to avoid spending thousands on trade mark services you won’t receive!
But How Do They Have My Details?
Trade mark ownership details are publicly available. When you lodge an application with IP Australia, your details are published on the trade marks register and in the Trade Marks Journal. This one of the reasons why when we file trade mark applications at LegalVision, we recommend our clients use a PO Box as their address if they do not want their residential address made publicly available. Using a PO Box, of course, does not mean you will not receive unsolicited correspondence.
Unscrupulous organisations use this information to offer you their services and send letters with invoices that ‘need’ to be paid. Although some letters may look official, they have no authority from IP Australia or the government, and they will not assist you with your trade mark registration. Do not be deceived by the fact that they have your personal details and know the details of your trade mark application.
But They’re Offering Me Extra Trade Mark Services?
Very often the organisations may be offering additional services relating to your trade mark, such as trade mark monitoring or renewal services. A large proportion of offenders are overseas, and they may offer you trade mark registration in another country or assistance in opposing another trade mark that conflicts with your own. Some even offer associated services such as domain name registration or advertising material.
While these services would indeed be very valuable to your business and for protecting your intellectual property, unfortunately, these organisations do not actually provide this support. Do not get taken in by their formal letterhead and official-sounding name.
But It’s From the ‘International Patent and Trade Mark Register’!
Sounds legit, right? Wrong! Most of the organisations use names that sound official like Federated Institute for Patent and Trade Mark Registry or Patent and Trade Mark Organisation LLC, but they are not official or government bodies. IP Australia has a list of companies it has identified who send unsolicited correspondence, as do WIPO.
But I Do Want to Register My Trade Mark Overseas!
Some international organisations offer you trade mark registration overseas, or some even inform you that a third party has applied for the same trade mark and offers to oppose the trade mark on your behalf. IP Australia has confirmed that some of these offers may be legitimate, but you are still not required to respond to the letter unless you are interested. Only consider these offers if it relates to a country your business operates, or is planning to operate, in. Do not waste your time considering trade mark registration in a country in which you will never trade simply because the organisation suggests it to you.
It is still important to exercise caution when exploring international trade mark registration, particularly when the organisation has contacted you. Do some research into their legitimacy, and speak with other law firms to compare pricing for opposing a third party’s trade mark.
Why Isn’t The Australian Government Doing Anything About This?
IP Australia is aware of the scams and has published helpful information on their website, including details about the organisations and the types of letters or offers you are likely to receive. You can also email IP Australia any correspondence you may receive so that you can check the legitimacy of the document.
The Australian Competition and Consumer Commission is also on the case. Their SCAMwatch website is designed to help inform consumers recognise scams. Since most of the companies are overseas, our regulators do not always have the jurisdiction to take action against them, but it is worth notifying the authorities if you receive correspondence from an Australian organisation.
So What Should I Do?
Be prepared to receive unsolicited correspondence – don’t be surprised when you receive that $2,000 invoice in the mail. Ensure your business’ account teams know about trade mark scams so they don’t accidently pay an invoice as per protocol. These companies easily entice trade mark applicants through their service offering but make sure you are exploring these services with legitimate organisations.
Don’t pay invoices from organisations you do not recognise. You should only receive correspondence from IP Australia or your trade mark lawyer regarding your application. Importantly, if you have any questions – ask! Get in touch with our IP lawyers on 1300 544 755.