Depending on which side of equation you are on, you may consider revenue made by sending trademark notices offering fake or useless services to trademark owners a resourceful business practice. If you are a trademark owner, you may not be amused by this view.
Owners of Canadian, as well as foreign patent and trademark applications and registrations often receive seemingly official notices and letters offering a range of “services”, all of which require a payment of high fees. Some patent and trademark owners have reported paying the requested fees, mistakenly thinking that they were paying fees required by the patent or trademark office. It is not the naivety of patent and trademark owners that makes them trust these notices, it is the fact that these scam letters look official and identify the owner’s trademark by the name and number.
Unfortunately, not much can be done about these notices, as they often come from different countries from the owner’s. All that trademark agents and the Canadian Intellectual Property Office (CIPO) can do is warn patent and trademark owners of these notices. The following is the warning posted on the CIPO website:
“Warning: scam notices related to patents or trademarks
The Canadian Intellectual Property Office (CIPO) is aware of various scam mail or email being sent to holders of patent and trademark registrations. These notices are designed to closely resemble CIPO notices.
Quick facts about scam notices:
Remember, legitimate notices about Canadian patents or trademarks nearing expiry will only come from CIPO.
The examples are in the language in which the original document was submitted to CIPO.
The above warning is mainly directed at self-represented individuals and companies. There is, however, an additional “tip” for entities who are represented by patent and trademark agents. If you receive any written communication and/or invoices regarding your intellectual property that do not originate from your patent or trademark agent, the best course of action is to forward such communications to your agent and ask them to confirm the legitimacy of those notices and invoices.
This problem is not Canada-specific. Patent and trademark owners from other countries face the same issues. Similar warnings are posted on websites of other patent and trademark offices, such as the United States Patent and Trademark Office: (https://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations), Australian IP Office(https://www.ipaustralia.gov.au/ip-infringement/more-about-ip-infringement/unsolicited-invoices), European Union Intellectual Property Office (https://euipo.europa.eu/ohimportal/en/misleading-invoices), to name just a few.
While there are advancements made in several countries, such as United States and New Zealand, it appears that nothing short of a harmonized international anti-fraud network can effectively stop these fraudulent and misleading business practices.
Until then, we urge all patent and trademark owners to put their IP agents between seeing and believing any communication that relates to their intellectual property.
Marina is a trade-mark lawyer in the Intellectual Property Group of Perley-Robertson, Hill & McDougall LLP/s.r.l. She can be reached at 613.566.2280 or email@example.com.