Trade mark scams – don’t be fooled!
Unfortunately, most trade mark owners will receive scam communications from organisations charging large sums of money for non-existent services, or poor quality services provided at disproportionate cost.
This article covers the most common types of trade mark scams, which arise in three main ways, with tips to help you avoid the scammers.
1. Approaches regarding non-existent proposals to register domain names or trade marks by third parties
This type of scam uses scare tactics about domain names and trade marks that a target company hasn’t registered. We first saw this type of scam in relation to domain names in China. Companies were contacted by organisations claiming to be domain name specialists, advising that they were handling an application for a Chinese domain name such as jmw.co.cn and that, as part of their ‘due diligence’ in registering this domain, they noted that another party owned rights in the name. They offered to discontinue registering the domain name for their client, and register the domain name to the contacted company instead for a fee, threatening that if the contacted company didn’t take action, they would proceed to register the domain to their client.
This scam has since evolved to cover trade mark applications too, which can also be very worrying for the party contacted. The scammers sometimes even misuse the identity of actual UK lawyers in their emails, which makes the approaches more believable.
Tell-tale signs that the approach isn’t genuine are short deadlines for reply, references to ‘trademark’ (in the UK we use the phrase ‘trade mark’ instead), and an unnatural writing style mentioning ‘formal verification’ or ‘due diligence’.
Real lawyers would never send this kind of email, as it would disclose their client’s confidential plans and information. It is usually simply an attempt to scare businesses into paying the rogue company to acquire a trade mark registration. Generally, the supposed trade mark has never actually been filed, and businesses who have used their name for several years can rely on their unregistered rights to protect their names. So, the emails can usually be ignored – but if a client genuinely does wish to file for registered protection, we can help with that.
2. Invitations to pay large sums of money for entry on an unofficial register
This rogue practice has taken place for years, and results from the fact that details of trade mark owners are included on a formal register. It is comparatively easy for companies to obtain the addresses of trade mark owners and send them fraudulent requests for payment.
These requests are often dressed up to look like a communication from a government organisation, but typically all they are offering is inclusion on an unofficial and unrecognised register. When you consider that the unofficial register is, in effect, a register of organisations which have fallen for scams, you definitely don’t want to be on that register!
3. Early invitations to renew trade mark registrations at inflated costs
This scam arises due to trade mark registrations only being subject to renewal every 10 years in most countries. Rogue companies send unsolicited offers to renew trade mark registrations to brand owners, giving the brand owner the impression that they are the regular lawyer for the registration. They tend to charge well over market rates for attending to renewal and send their reminders a year before the renewal deadline - well before renewal can actually be carried out. So, they can quickly generate vast profits, due to charging inflated fees, and hold on to your money for many months before they can actually carry out the renewal.
How JMW can help
If you receive any communication regarding a trade mark or domain name which you are not expecting, please send a copy to your usual IP specialist at JMW, and we’ll be happy to confirm whether it is genuine – or feel free to email a copy to our team’s email address ip@jmw.co.uk.