One of the latest scams dogging businesses and business owners is the area of the registered trademark, where businesses are receiving unsolicited invitations or requests from companies purporting to be from official government agencies.
As you may be aware, trademarks are the new real estate in the world of brands, slogans and 140 character messages that flood the market every day. Capturing people’s attention in a time poor, overcrowded world is critical, hence the increasing importance and value of trademarks.
However, laying claim to catchy slogans and securing your brand message can be fraught with danger.
Sadly, we know from past experiences that when something becomes critical for business you can rest assured that there are unscrupulous people lurking, looking to get your money at your expense.
I should preface this by stating that I am not an IP or trademark lawyer. However, as the owner of several trademarks, I have learnt many valuable lessons from my own IP lawyer about what to do and not to do in the now murky world of trademarks. I can assure you it is an education in itself.
So what do you need to be alert to as far as trademark scams are concerned?
Firstly, there are two types of trademark scammers you need to be aware of:
1. Trademark trolls
2. Unregistered trademark registries
These two types of scammers represent two sides of the same coin.
A trademark troll is a pejorative term for any entity that attempts to register a trademark without intending to use them and who then threatens to sue others who use that mark.
As Arty Rajendra, specialist IP lawyer and partner in Rouse’s London office, states in her recent article,‘Trademark trolls – a new phenomenon?’, trademark trolls fall into three general categories:
1. Those who register trademarks for names obviously belonging to a well known third party, with the clear intention of deploying those marks against the ‘true’ owner.
2. Those who register trademarks speculatively, do not use them, but look to deploy them against traders who later adopt the same name.
3. Those who register trademarks and actually use them but seek to enforce the marks more widely than is legitimate (often against parties operating in different sectors).
The unregistered trademark registry is also a big threat. These are people and companies who use publicly available information such as trademarks and then ring you and offer ‘official’ services around getting or protecting trademarks which they have no right to do so. IP Australia, the official Australian Government department for intellectual property including trademarks, has recently issued this warning:
WARNING: Other people may use this publicly available information to offer you their services. These companies are not associated with IP Australia and have no official or government authority. The service they offer does not provide official trade mark registration or trade mark rights in Australia or any other country. Please note letters and reports originating from IP Australia feature the Commonwealth Coat of Arms and/or IP Australia’s letterhead.
One of my colleagues also sent me this from their IP trademark lawyers:
Warning regarding unsolicited services: As your trademark application details will become published in due course, you may receive unsolicited communication from other businesses. Some companies and individuals are sending out unsolicited invitations to applicants and owners of AU trademarks inviting them to apply for entry in various (sometimes official sounding) publications and “registers” in return for payment of a fee. These parties tend to make their offers in the form of invoices, which are usually sent out after the publication of the official application. You should be aware that these companies are not linked to any Government Institution and there is no obligation to pay them. Additionally some companies are writing to owners of trademarks whose registrations are due for renewal offering (for a fee) to renew the registration.
As Arty Rajendra says by way of conclusion in her article:
“Deceitful greedy people really do exist, even in the seemingly innocuous world of trademarks. Generally, the courts/registries will come to the aid of a brand owner whose rights have been hijacked. Always try to conduct a trademark search and set aside a fighting fund if it reveals a problem. Register your brand as soon as possible in key markets.
“In the age of the global marketplace, these are more than you might have once thought.
“Finally, do not underestimate your common law rights, and ensure that, in order to rely on them, you keep good, easily accessible, records of use. Then you should be able to defeat the trolls, if you stumble across them.”
Well said. I hope this helps you keep your money in your pocket and sleep well at night.
Remember, everybody lives by selling something.
Sue Barrett is a sales expert, business speaker, adviser, sales facilitator and entrepreneur and founded Barrett Consulting to provide expert sales consulting, sales training, sales coaching and assessments.
SEE IP AUSTRALIA’s LIST of KNOWN UNSOLICITED SERVICES BELOW:
PATENT AND TRADE MARK REGISTERS
If you own a registered patent or trade mark, you may find yourself the target of letters regarding overseas registration of your application. Letters from unfamiliar organisations, especially letters requesting payment for unsolicited services, should be treated with caution.
Examples of unsolicited service requests include:
- offers to register patents or trade marks in international registers
- invoices for registration of patents or trade marks in registers
- offers of patent or trade mark monitoring services
Companies known to send unsolicited requests:
- Commercial Centre for Industry and Trade (based in Switzerland)
- Company for Economic Publications Ltd (based in Austria)
- Company for Publications and Information Anstalt (based in Liechtenstein)
- Edition The Marks KFT
- European Institute for Economy and Commerce – EIEC (based in Belgium)
- Federated Institute for Patent and Trademark Registry, based in Florida, USA
- Gaia Almanach LTD
- Globus Edition SL (based in Spain)
- I.B.F.T.P.R – International Bureau for Federated Trademark & Patent Register
- INFOCOM (based in Switzerland)
- Institute of Commerce, Trade and Commerce (based in Switzerland)
- International Patent and Trademark Register based in Nurnberg, Germany.
- IT & TAG (based in Switzerland)
- Patent & Trademark Organisation LLC (based in USA with a street address in Melbourne)
- RIPT – Register of International Patents and Trademarks
- TM Collection (based in Hungary)
- TM Worldwide (based in Hungary)
- TMP, Trade Mark Publishers, Austria but with a street address in Sydney
- ZDR-Datenregister GmbH (based in Germany)
WIPO also provides a list of companies requesting payment from PCT applicants and agents which are unrelated to the processing of international applications under the PCT.
You may also receive correspondence from an overseas lawyer or attorney firm informing you that someone has applied to register your trade mark in another country and offering their services if you decide to oppose registration.
This is a legitimate service but may only be relevant if you intend to use your trade mark in that particular country. If you have no such intention you do not need to take any action.
GET PROFESSIONAL ADVICE
Before paying a fee for any IP-related service, we recommend that you carefully consider what, if any, protection, promotion or other value the service will provide.
For specific assistance and advice you could contact an IP professional.
How can we work together? Please contact me if you have any new ideas in relation to branding and trade mark research and applications.
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Contact me if you need assistance with logo, and trade marks of any type or application.
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