It is an unfortunate reality that many trade mark applicants and owners will be the target of sophisticated scam attempts.
These attempts are usually sent by mail, and are sent directly to the recorded owner’s address, bypassing the official address for service.
As a trade mark owner, it is important to be vigilant and to be aware of these scams.
Currently, IP Australia, and many other trade mark offices, publish addresses for both the trade mark applicant/owner and an “Address for Service”. The Address for Service is intended to be the address to which formal notifications and legal correspondence may be addressed.
In our view, publication of an additional address for the owner is redundant (given all official correspondence is meant to be addressed to the Address for Service). This publication also allows unscrupulous operatives to exploit the applicant’s address to send unsolicited correspondence.
While many trade mark offices publish warnings about unsolicited correspondence, many applicants - especially self-filers - are not sufficiently aware of scam activities. Many fall victim to such scams.
How can you spot a scam?
Any of the following factors may indicate a possible scam:
- you receive an unsolicited offer to ‘publish’, ‘advertise’ or ‘register’ your trade mark in a foreign or international publication;
- you receive an unsolicited offer to ‘renew’ your trade mark registration (often more than 12 months before your trade mark is actually due for renewal);
- you receive a request for payment from an unknown source - especially if it comes from an overseas address;
- the correspondence has been sent directly to your address, when your address is not the formal address for service;
- the correspondence requests payment in a currency other than Australian dollars (eg Euros) and the amount appears to be significantly inflated;
- the correspondence relates to an Australian trade mark and has not been sent by IP Australia or your trade mark adviser;
- the correspondence looks like an invoice or has ‘fine print’ - check the reverse side for double-sided printing.
IP Australia has collated a list and several examples of unsolicited correspondence here.
What can you do if you receive a suspicious communication?
If you receive a suspicious communication, verify the communication is legitimate before responding or making payment.
If in doubt, you can check with IP Australia or contact your trade mark adviser. If you don't have a trade mark adviser, please feel free to contact us.
If you think that you have been scammed, you can:
- immediately contact your bank or financial institution (who may be able to stop or reverse the payment)
- report the scam to ScamWatch.gov.au
- report the scam to IP Australia
To help combat scam attempts, we use our own address in place of the applicant's address. This is becoming common practice among trade mark advisers as it helps to limit exposure of the applicant to unsolicited correspondence.
Xuveo Legal is also proud to have made submissions to IP Australia regarding the need for greater protection of personal information on the Trade Marks register. We proposed that IP Australia should remove the applicant/owner's address from publication and instead only publish the formal Address for Service. Alternatively, we suggested that IP Australia could consider utilising its online eServices platform for all communications regarding trade mark matters.
In early 2018, IP Australia formally recognised the issue of privacy protection and included it as an official policy issue for action across all IP rights administered by IP Australia. At the time of this post, the Policy Issue is open for public submissions and feedback on the IP Australia Policy Register (Reference: Policy ID 59).
As we receive more examples of unsolicited correspondence, we will post them to our Trade Mark Scams photo album on Facebook.
The following links also contain further information about known trade mark scams:
- IP Australia Unsolicited Invoices and False Billing
- World Intellectual Property Organisation (WIPO) Warning - Misleading Invoices
This post is intended for general information only and is not intended to constitute legal advice. You should obtain appropriate professional advice for your circumstances or contact us for further assistance.