Trade Mark and Patent owners urged to use caution before paying ‘official-looking’ invoices

Holders of UK and EU trade marks and patents are being warned to carefully check the source of unsolicited invoices relating to those rights before paying them, after a sharp rise in the number of agencies operating to mislead Intellectual Property (IP) owners.

The invoices themselves often look official, but relate to services that a rights holder does not need, such as entry onto an unnecessary directory. Alternatively, these invoices may demand a highly inflated price for renewal of IP registrations.

The UK Intellectual Property Office (IPO) has recently been successful in taking action against Intellectual Property Agency Limited (IPAL) who were passing themselves off as the IPO, and also infringing the trade mark INTELLECTUAL PROPERTY OFFICE.

IPAL wrote to the proprietors of trade marks and patents to remind them that the registered right was soon due for renewal, and offering to see to that renewal. IPAL were charging a minimum of £1280 to see to the renewal of a trade mark, but the official fee at the IPO is only £200. Their charges for renewal of a patent were equally inflated, and whilst they did see to the renewal of those rights, proprietors were misled into believing that the invoice was an official one from the IPO.

In its Judgment, the Intellectual Property Enterprise Court (IPEC) held that whilst the logo of IPAL was not similar to that of the IPO, the presence of the logo and the overall presentation of the ‘Reminder’ gave the impression it was emanating from an official source. The logos are:

The Court also held that the name INTELLECTUAL PROPERTY AGENCY was similar to INTELLECTUAL PROPERTY OFFICE, not least because Government bodies are sometimes called agencies.

But whilst this is a good result, action has only been taken against a handful of these companies. A document comprising examples of no less than 83 known misleading invoices can be seen from the website of OHIM (the European Trade Mark and Design Registry).

Having your trade mark portfolio managed by Edwin Coe means that a short email or phone call can quickly determine whether an invoice is legitimate or not, and potentially save you unnecessary expense.

If you wish to discuss any of the issues raised above, please contact Nick Phillips – Partner, Clare Grimley – Trade Mark Attorney, or any member of the Edwin Coe Intellectual Property team.

Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.

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