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Trade Mark Scams

Trade Mark Scams – With a twist

May 12, 2009

What is a scam?  According to the consumer fraud reporting “A confidence trick, confidence game, or con for short (also known as a scam) is an attempt to intentionally mislead a person or persons …. usually with the goal of financial or other gain…”

The Intellectual Property Office devotes a whole page here warning IP applicants that “Scams aimed at unwary inventors never go away. A newcomer we’ve become aware of is a Brussels-based organisation calling itself the ‘European Institute for Economy and Commerce (EIEC)’.  You’re likely to be targeted by EIEC – and maybe other scammers – if you apply for any form of IP where your contact details are legitimately published as part of the application process. For example, you apply for a trade mark and in due course your details are published in the official Trade mark Bulletin. You then receive an invoice for ‘registration fees’ totalling hundreds of pounds. The invoice looks authentic, and its very cunning wording may keep it technically legal, but for all practical purposes it’s completely bogus”. The Intellectual Property Office are now also sending warning notes with their correspondence.

So, against this background of known targeting of trade mark registrants, when 3 separate clients for whom we had registered trade marks contacted us in a single morning last week, asking whether to pay ‘invoices’ they had received from a Community Trade Mark Filing Service, I mentioned this on Twitter saying: “Today 3 clients contacted me about a demand for £573.40 which they’ve received from Community Trade Mark Filing service of Liverpool.  Scams”.  When Class 46 blog became interested, I supplied them with a copy of one of the invoices, and their post on it appears here.

So, imagine my surprise yesterday to receive a 2 page letter from Community Trade Mark Filing Service threatening me and Azrights with defamation proceedings on the basis that my Twitter statement was “highly defamatory and/or malicious falsehood designed to damage the reputation of our company in the market place”…   They were seeking, among other things, an apology, and proposal for payment of damages, failing which they will be issuing proceedings against us.

Why a company that chooses a name like Community Trade Mark Service (designed to sound like it is an official body) and style of approach involving the sending pro forma invoices as a way of promoting its trade mark filing service (of converting the UK application to a Euorpean trade mark) would  object in these terms to the use of the word SCAM to describe their activity is amazing.   If 3 clients in one morning get in touch, all wondering whether they have to pay this company, or whether it is a scam, then it’s a scam.  The fact that some kind of service is offered in return to those who engage with the company, knowingly or unknowingly,  does not alter the fact that it is an attempt to intentionally mislead a person….. with the goal of financial or other gain.  It is also clear from the company’s FAQ pages that they are fully aware of the confusion their style of operating engenders.

After receiving this letter I looked online and found Legal Banter forum trying to make sense of these pro forma invoices.

As a service for filing an EU application based on the UK one, it is jolly expensive at £573.40.  The work involved in filing an EU application by copying the UK trade mark classification and other details is negligible.  Many clients do not want more than a UK trade mark, but those that do want an EU trade mark, are deterred not by the legal fees involved, but by the official fees.  An e-filed application used to be 1600 Euros, but is now 900 Euros, so that helps.  However, Community Trade Mark Filing Service isn’t helping the fees problem,  offering as it does a postal service where the filing fees are higher – 1050 Euros.  And on top of it all, the company leaves it to the applicant  to post off the application and pay the fees to OHIM…. (presumably, thereby avoiding the need to go on the record as representative of the applicant).

So, the way I see it, Community Trade Mark Service’s communication to me is designed to achieve the same effect on professionals, as their pro formas are designed to have upon UK trade mark applicants.