• Seeing is NOT Believing: Trademark Solicitation Scams
  • October 25, 2016
  • Law Firm: Perley-Robertson, Hill & McDougall LLP/s.r.l. - Ottawa Office
  • Depending on which side of equation you are on, you may consider revenue made by sending trademark notices offering fake or useless services to trademark owners a resourceful business practice. If you are a trademark owner, you may not be amused by this view.

    Owners of Canadian, as well as foreign patent and trademark applications and registrations often receive seemingly official notices and letters offering a range of “services”, all of which require a payment of high fees. Some patent and trademark owners have reported paying the requested fees, mistakenly thinking that they were paying fees required by the patent or trademark office. It is not the naivety of patent and trademark owners that makes them trust these notices, it is the fact that these scam letters look official and identify the owner’s trademark by the name and number.

    Unfortunately, not much can be done about these notices, as they often come from different countries from the owner’s. All that trademark agents and the Canadian Intellectual Property Office (CIPO) can do is warn patent and trademark owners of these notices. The following is the warning posted on the CIPO website:

    Warning: scam notices related to patents or trademarks

    The Canadian Intellectual Property Office (CIPO) is aware of various scam mail or email being sent to holders of patent and trademark registrations. These notices are designed to closely resemble CIPO notices.

    Quick facts about scam notices:
    They often say that your patent or trademark protection is about to expire and ask you to renew registrations or pay fees. Typically, the fees "due" are higher than CIPO fees. Verify our list of fees.
    To sound legitimate, they incorporate information from public records available in CIPO databases.
    They can include cautionary language such as "patent cancellation notice" or "important notification regarding your federal trademark."
    Some notices even include "Canada" or "Canadian" in the company name and letterhead, making them appear official.
    They can offer to add you to directories which appear official, or offer services similar to those already provided by CIPO.
    Remember, legitimate notices about Canadian patents or trademarks nearing expiry will only come from CIPO.

    How to tell it's legitimate
    Mail notices from CIPO will come from this address: 50 Victoria St., Gatineau, QC, K1A 0C9.
    Emails from CIPO will have the "@canada.ca" domain name.
    Notices about international applications under the Madrid Protocol would come from the World Intellectual Property Office address or from the domain "@wipo.int".
    EXAMPLES OF NON-CIPO NOTICES

    The examples are in the language in which the original document was submitted to CIPO.
    Scam notice 1 (PDF - 640 KB - 1 page)
    Scam notice 2 (PDF - 312 KB - 1 page) (in French only)”
    The above warning is mainly directed at self-represented individuals and companies. There is, however, an additional “tip” for entities who are represented by patent and trademark agents. If you receive any written communication and/or invoices regarding your intellectual property that do not originate from your patent or trademark agent, the best course of action is to forward such communications to your agent and ask them to confirm the legitimacy of those notices and invoices.

    This problem is not Canada-specific. Patent and trademark owners from other countries face the same issues. Similar warnings are posted on websites of other patent and trademark offices, such as the United States Patent and Trademark Office: (https://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations), Australian IP Office(https://www.ipaustralia.gov.au/ip-infringement/more-about-ip-infringement/unsolicited-invoices), European Union Intellectual Property Office (https://euipo.europa.eu/ohimportal/en/misleading-invoices), to name just a few.

    While there are advancements made in several countries, such as United States and New Zealand, it appears that nothing short of a harmonized international anti-fraud network can effectively stop these fraudulent and misleading business practices.

    Until then, we urge all patent and trademark owners to put their IP agents between seeing and believing any communication that relates to their intellectual property.