As much as we promote and encourage honourable and effective selling and buying practices it is just as important to keep an eye open for the latest scams and scammers looking for unsuspecting victims.
One of the latest scams dogging businesses and business owners is the area of the registered Trademark where business are receiving unsolicited invitations or requests from companies purporting to be from official government agencies. As you may be aware Trademarks are the new real estate in the world of brands, slogans and 140 character messages that flood the market every day. Capturing people’s attention in a time poor, overcrowded world is critical hence the increasing importance and value of Trademarks. However, laying claim to catchy slogans and securing your brand message can be fraught with danger.
Sadly, we know from past experiences that when something becomes critical for business you can rest assure that there are unscrupulous people lurking looking to get your money at your expense.
I should preface this by stating that I am not an IP or Trademark Lawyer however, as owner of several Trademarks myself I have learnt many valuable lessons from my own IP lawyer about what to do and not to do in the now murky world of Trademarks. I can assure it is an education in itself.
So what do you need to be alert to as far as Trademark scams are concerned?
Firstly there are two types of Trademark scammers you need to be aware of:
- Trademark Trolls
- Unregistered Trademark registries
These two types of scammers represent 2 sides of the same coin.
A Trademark troll is a pejorative term for any entity that attempts to register a trademark without intending to use them and who then threatens to sue others who use that mark.
As Arty Rajendra, specialist IP lawyer and partner in Rouse’s London office states in her recent article: Trademark trolls – a new phenomenon? January 2013
“Trademark trolls appear to fall into three broad categories:
1. Those who register trademarks for names obviously belonging to a well known third party, with the clear intention of deploying those marks against the ‘true’ owner.
2. Those who register trademarks speculatively, do not use them, but look to deploy them against traders who later adopt the same name.
3. Those who register trademarks and actually use them but seek to enforce the marks more widely than is legitimate (often against parties operating in different sectors).’
The Unregistered Trademark Registry is also a big threat. These are people and companies who use publically available information such as trademarks and then ring you and offer ‘official’ services around getting or protecting trademarks which they have no right to do so. IP Australia, the official Australian Government department for Intellectual Property including Trademarks has recently issued this warning:
WARNING: Other people may use this publicly available information to offer you their services. These companies are not associated with IP Australia and have no official or government authority. The service they offer does not provide official trade mark registration or trade mark rights in Australia or any other country. Please note letters and reports originating from IP Australia feature the Commonwealth Coat of Arms and/or IP Australia’s letterhead.
One of my colleagues also sent me this from their IP trademark lawyers:
Warning regarding unsolicited services: As your trademark application details will become published in due course, you may receive unsolicited communication from other businesses. Some companies and individuals are sending out unsolicited invitations to applicants and owners of AU trademarks inviting them to apply for entry in various (sometimes official sounding) publications and “registers” in return for payment of a fee. These parties tend to make their offers in the form of invoices, which are usually sent out after the publication of the official application. You should be aware that these companies are not linked to any Government Institution and there is no obligation to pay them. Additionally some companies are writing to owners of trademarks whose registrations are due for renewal offering (for a fee) to renew the registration.
As Arty Rajendra says by way of conclusion in her article ‘Deceitful greedy people really do exist, even in the seemingly innocuous world of trademarks. Generally, the courts/registries will come to the aid of a brand owner whose rights have been hijacked. Always try to conduct a trademark search and set aside a fighting fund if it reveals a problem. Register your brand as soon as possible in key markets. In the age of the global marketplace, these are more than you might have once thought. Finally, do not underestimate your common law rights, and ensure that, in order to rely on them, you keep good, easily accessible, records of use. Then you should be able to defeat the trolls, if you stumble across them.’
Well said. I hope this helps you keep your money in your pocket and sleep well at night.
Author: Sue Barrett, www.barrett.com.au