For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Tuesday, 5 March 2013

It's springtime, and it's time to fleece IP owners again

Waiting to be fleeced ...
It is a long time since the IPKat has turned his attention to intellectual property scams, but it's springtime and, when the rest of us are turning our thoughts to a variety of pleasures which the authors of this weblog need not enumerate, the scammers are turning their thoughts to a spot of scamming.  While the little woolly sheep prepare to shed their coats for the good of the clothing industry, a number of our friends and colleagues will soon find that they have been fleeced too.  In this connection, occasional guest contributor Sean Gilday (Page Hargrave) writes:
“Intellectual Property Office is an operating name of the Patent Office” should be a phrase familiar to those working in IP in the United Kingdom, appearing as it does at the bottom of every page of the UK IPO’s website, at the bottom of PowerPoint slides in IPO presentations, at the bottom of search reports, exam reports, grant letters and any other form of official communication.  The reason for this is well known: the term in the statute is Patent Office.  And while “Intellectual Property Office” may sound more modern, it would take an Act of Parliament to change the name officially (similarly, various individuals down the years have styled themselves “CEO” of the Patent Office, but remained, inescapably, the “Comptroller").
Although spurned in this way, the IPO does in fact enjoy a monopoly on the name “Patent Office”, enshrined in Section 112 of the Patents Act 1977.  Any person attempting to represent himself as the Patent Office is liable for an amount up to level 4 on the standard scale (i.e. up to £4,500). 
Now, a perennial problem, of which I’m sure many IPKat readers are aware, are patent and trade mark renewal firms that send out official-looking letters to IP owners informing them that their registered right is approaching a renewal deadline, with accompanying alarming text listing the various woes that will befall the recipient if the fee is not paid by the appropriate date.  
The scary data relating to the renewal dates is however no secret: it is freely available on the IPO website, as well as the applicants’ addresses.  The sending of these reminders is therefore the fruit of trivial effort and costs little.  If only a few people take up the offer, the perpetrator will obtain a handsome profit.  Presumably, IP holders are more likely to respond to communication they believe to be official, and, consequently, it appears that there is a temptation on the part of these renewal firms to use language implying, as far as is possible, that one represents the Patent Office.  
More than once, in the short time I have been working as an attorney, clients have contacted me to ask “Is this letter actually from the Patent Office?”, presenting me with something like this, to use a recent, egregious, example.  Although the letterhead reads “Patent & Trademark Office” there is, buried deep in the boilerplate, a disclaimer that states "We would like to inform you that we are not Intellectual Property Office".  I wrote to the IPO to ask if this would be sufficient to absolve the company from its letterhead when considering whether "words suggesting that his place of business is, or is officially connected with, the Patent Office" have been used (the requirement for liability under Section 112), and received a reply stating that mine is not the first inquiry regarding this company, and that legal advice is being sought on the matter. 
We shall have to wait and see if anything comes of this, however I’m not hugely optimistic.  The problem is that the low-cost nature of the business makes these firms very agile, popping up quickly and shutting down whenever action is threatened.  Still, I was gratified to be informed that the IPO is at least looking into the issue.  The IPO’s dedication to its public service remit is evident in its extremely patient treatment of private applicants, and it crops up in every discussion over raising renewal fees, so it would be nice to see them flex a little legal muscle to preserve their good name".
This is not the first time the Kat has raised the subject.  Search this weblog under "scam" and you will find a rich and varied literature on the subject, going back many years.  Search the MARQUES Class 46 weblog under "scam" and you will find that Jeremy and other bloggers have been busily alerting trade mark folk there too. 

But it's springtime and the scammers become increasingly audacious.  Writes Katfriend Rebecca Field (Harrison Goddard Foote),
"A client of one of my colleagues received renewal reminders from the website at http://www.trademarkoffice.org.uk/uks/ . When you click on the website, you will notice that it bears a somewhat striking similarity to the official UKIPO website. The client was savvy in recalling having received reminders before from other agencies and thus knows only to expect renewal notices from our firm, thus reported to my colleague".
The IPKat has received correspondence on the same issue from Robert Orr (Urquhart-Dykes & Lord) which, to his shame, he was unable to action earlier on account of pressure of work.

The reality is that nothing changes.  The IPO is always "looking into it" and was said to be "seeking legal advice" years ago.  This scourge continues and it will always be profitable for the scammers to carry on since every year there are new and unsuspecting victims waiting to be fleeced.  Says Merpel, here's a challenge for the UKL's new Minister for Intellectual Property.  Here's a practice which is deceptive and leaches money away from the innovative and creative industries that can least afford to lose it: what are you going to do about it?

11 comments:

Joe M said...

Is there anything in the Patents Act or Rules that requires the Applicant's address to be their real address?

I am only aware of it being needed so as to allow the Patent Office to contact them.

Could a patent agent specify their business address as the Applicant's address, so that when these characters send these "reminders" the agent can simply bin them?

Or would such a non-disclosure of the applicant's real address fall fould of some rule, perhaps even be a conflict of interest in the eyes of IPReg? (as the IPO cannot contact the applicant directly).

Just a thought!

Anonymous said...

I'm an in-house patent attorney and last week received about 50 renewal letters from this "Patent & Trademark Office", each accompanied by a pre-paid first class envelope. Company registration number 07925907 is mentioned in the Terms & Conditions on the reverse of the letter. I would hope this could be used to track down the individuals concerned. Would the maximum fine be multiplied by the number of letters they send out?

I have emailed the UKIPO but not heard anything back from them yet.

Anonymous said...

Apart from those that might be pretending to be associated with the "Patent Office", it's not very clear what offence these "scammers" are guilty of. They are offering a renewals payment service, which is presumably genuine, albeit with a very high service charge. But simply selling something at an inflated prices isn't a crime. Nor is cold calling potential customers.

Ron said...

The general feedback section of the IPO's customer feedback page for the last quarter of 2012

http://www.ipo.gov.uk/about/feedback/feedback-previous/feedback-previous-2012q4.htm

provides two standard responses to complaints about misleading invoices. The long one is

We said, "Thank you for informing us about the misleading invoice you have received. We are gathering as much information as we can about this problem. In response to the large number of complaints we have received we have created a new landing page which warns customers of the types of services offered by these companies http://www.ipo.gov.uk/warning.htm. We have also issued a mail shot to all unrepresented trade mark proprietors to warn them that they could receive misleading invoices. As a matter of course all new customer who file applications are provided with a warning notice to raise awareness of the issue. In addition to this, we are continually liaising with our legal team to ascertain if there is anything that can be done from a legal perspective in the UK, as well as discussions with the IP profession, who are also of course very much affected. We realise of course that we must engage others in this particular issue and there are no simple solutions but we have been and are taking it very seriously. You should note that you can renew your Patent directly with the Intellectual Property Office. The process is fairly simple and further information about the fees and form required can be obtained from our website at: http://www.ipo.gov.uk/p-renew.htm."

and the short one is

We advised you, "To contact Trading Standards."

ipdraughts said...

@Anon at 10:07. Easy enough to find them via Companies House then search against their registered office. See http://www.trademarkoffice.org.uk

MrMeenie said...

@Anonymous - do what we do...tape the pre-paid envelope to a brick and return it via the Post Office at their expense.

Anonymous said...

Calling themselves "trade mark office" would seem to be close enough to be an offence, in my humble opinion. I'm not sure why the IPO doesn't go out and get them prosecuted. To be fair, the IPO have got misleading invoices back as the main story on their website again.

And don't bona fide agents charge of the order of £50 for paying a renewal fee?

Anonymous said...

Anonymous.. I think you might need to get an up to date fee schedule!

Anonymous said...

Please see a related post from the US at: http://www.iplawalert.com/2012/05/articles/trademark/caveat-emptor-uspto-issues-warning-on-misleading-third-party-communications/

Anonymous said...

http://www.trademarkoffice.org.uk/uks/
seems to have copied a good deal of their website text verbatim from the USPTO website.

Is there a coyright issue here? If so, could the copyright owner be persuaded to do anything about it?

Anonymous said...

The Companies House website is easy to use (interestingly, there are scam sites for it too) and this company was registered in January 2012 at an address of Unit 3.28, 75 Whitechapel Road. They had a previous name of Trademark Agents Ltd!

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