Waiting to be fleeced ...
It is a long time since the IPKat has turned his attention to intellectual property scams, but it's springtime and, when the rest of us are turning our thoughts to a variety of pleasures which the authors of this weblog need not enumerate, the scammers are turning their thoughts to a spot of scamming. While the little woolly sheep prepare to shed their coats for the good of the clothing industry, a number of our friends and colleagues will soon find that they have been fleeced too. In this connection, occasional guest contributor Sean Gilday (Page Hargrave) writes:
“Intellectual Property Office is an operating
name of the Patent Office” should be a phrase familiar to those working in IP
in the United Kingdom, appearing as it does at the bottom of every page of the UK IPO’s website, at the bottom of PowerPoint slides in IPO presentations, at the bottom of
search reports, exam reports, grant letters and any other form of official
communication. The reason for this is
well known: the term in the statute is Patent Office. And while “Intellectual Property Office” may
sound more modern, it would take an Act of Parliament to change the
name officially (similarly, various individuals down the years have styled themselves
“CEO” of the Patent Office, but remained, inescapably, the “Comptroller").
Although spurned in this way, the IPO does in
fact enjoy a monopoly on the name “Patent Office”, enshrined in Section 112
of the Patents Act 1977.
Any person attempting to represent himself as the Patent Office is liable
for an amount up to level 4 on the standard scale (i.e. up to £4,500).
Now, a perennial problem, of which I’m sure many
IPKat readers are aware, are patent and trade mark renewal firms that send
out official-looking letters to IP owners informing them that their registered right is approaching a renewal deadline, with accompanying alarming text
listing the various woes that will befall the recipient if the fee is not paid by the
appropriate date.
The scary data relating to the renewal
dates is however no secret: it is freely available on the IPO website, as well as the applicants’ addresses. The sending of these reminders is therefore the fruit of trivial effort and costs little. If only a few
people take up the offer, the perpetrator will obtain a handsome profit. Presumably, IP holders are more likely to
respond to communication they believe to be official, and, consequently, it
appears that there is a temptation on the part of these renewal firms to use language implying, as far as is possible,
that one represents the Patent Office.
More than once, in the short time I have been
working as an attorney, clients have contacted me to ask “Is this letter
actually from the Patent Office?”, presenting me with something like this, to use a recent, egregious, example. Although the letterhead reads “Patent &
Trademark Office” there is, buried deep in the boilerplate, a disclaimer that states
"We would like
to inform you that we are not Intellectual Property Office". I wrote to the IPO to ask if this would be
sufficient to absolve the company from its letterhead when considering whether
"words suggesting that his place of business is, or is officially
connected with, the Patent Office" have been used (the requirement for
liability under Section 112), and received a reply stating that mine is not the
first inquiry regarding this company, and that legal advice is being sought on
the matter.
We shall
have to wait and see if anything comes of this, however I’m not hugely
optimistic. The problem is that the low-cost nature of the business makes these firms very agile, popping up quickly
and shutting down whenever action is threatened. Still, I was gratified to be informed that
the IPO is at least looking into the issue.
The IPO’s dedication to its public service remit is evident in its
extremely patient treatment of private applicants, and it crops up in every
discussion over raising renewal fees, so it would be nice to see them flex a little
legal muscle to preserve their good name".
This is not the first time the Kat has raised the subject. Search this weblog under "scam" and you will find a rich and varied literature on the subject, going back many years. Search the MARQUES Class 46 weblog under "scam" and you will find that Jeremy and other bloggers have been busily alerting trade mark folk there too.
But it's springtime and the scammers become increasingly audacious. Writes Katfriend Rebecca Field (Harrison Goddard Foote),
"A client of one of my colleagues received renewal reminders from the website at http://www.trademarkoffice.org.uk/uks/ . When you click on the website, you will notice that it bears a somewhat striking similarity to the official UKIPO website. The client was savvy in recalling having received reminders before from other agencies and thus knows only to expect renewal notices from our firm, thus reported to my colleague".
The IPKat has received correspondence on the same issue from Robert Orr (Urquhart-Dykes & Lord) which, to his shame, he was unable to action earlier on account of pressure of work.
The reality is that nothing changes. The IPO is always "looking into it" and was said to be "seeking legal advice" years ago. This scourge continues and it will always be profitable for the scammers to carry on since every year there are new and unsuspecting victims waiting to be fleeced. Says Merpel, here's a challenge for the UKL's new Minister for Intellectual Property. Here's a practice which is deceptive and leaches money away from the innovative and creative industries that can least afford to lose it: what are you going to do about it?