While scams and frauds targeting trademark holders have been around for years, we have recently noticed an increasing frequency and sophistication in their appearance and approach.
Generally, a firm that has made an application to IP Australia for trade mark protection on an applicant's behalf will be listed as the Address for Service for any official correspondence concerning that trade mark. The application will also list the trade mark owners address. The Australian Trade Mark Office makes this information available to the public domain via IP Australia's Australian Trade Mark On-line Search System (ATMOSS). This publicly accessible information becomes the target of many of these scams.
Although most official communication we receive at Surry Partners comes from IP Australia, we have become increasingly aware of clients receiving unsolicited invoices urging them to pay a fee for the publication of a trade mark in a "publication".
A client recently received an invoice from "TM-Edition – International Catalogue of Trademarks", a company based in Hungary. The invoice included a reproduction of the trade mark we had recently obtained registration for on behalf of the client and a request of payment for "registration costs" of AUD $1,850. The invoice looked like this:
A closer look at the "invoice" reveals that the only services gained by paying the invoice is for the trade mark to be published as a "listing in the TM-Edition" and to receive a "complimentary copy of the publication". Undeniably this service offers no practical benefit to the trade mark owner, and could only be an unofficial list that the sender has or may create.
Typically this type of correspondence is sent from organisations based in Eastern Europe with names that are similar to genuine intellectual property organisations. IP Australia and the World Intellectual Property Office (WIPO) both publish a frequently updated list of these organisations on their website (see www.ipaustralia.gov.au/ip-infringement/unsolicited-invoices/).
If you receive any similar communication from an unfamiliar organisation in relation to your trade mark it should be ignored and the invoices should not be paid.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
