For several years now, patent and trademark offices in many countries have been warning users about the proliferation of fraudulent notices received through emails, regarding the registration of commercial trademarks. The number of notices continues to increase and represents a real problem; in fact, this activity is so rampant, that it is currently considered to be reaching epidemic proportions.
The nature of industrial property rights, which require the publication of the data related to the trademark and the applicant, gave rise to a new form of scam, very economical in its execution and at the same time extremely lucrative for those who practice it. The scam involves sending fraudulent invoices to trademark titleholders, requiring them to pay certain quantities to register or renew their trademarks, complete the registration process, and obtain a trademark registration certification in a private registry (which does not actually exist).
The electronic publication of the industrial property bulletins allows trademark and applicant information to be within everyone’s reach. This makes the extraction of an applicant or titleholder’s essential data related to the trademark or a patent, to be automated and in a few minutes thousands of fraudulent emails can be sent. The business is lucrative, because despite the small number of people who actually get scammed, the number of daily published trademarks in the world is in the thousands.
These notices replicate official communications from entities who manage industrial property and usually have an extremely official appearance. The majority of scam notices include the logo of the patent and trademark office of the country or that of the European Union, a serial reference number for the registered trademark request that is specific to the owner, and a description of the trademark.
The United States Patents & Trademark Office (USPTO) is aware of the proliferation of scam notices and is continuously trying to combat it. The USPTO’s official website informs about these notices through the following web page: https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices, which includes an educational video, as well as a list with common delinquent names. The USPTO also encourages any person who receives said notification to inform the Federal Trade Commission (FTC), as the FTC is the agency with the authority to prosecute offenders.
In Europe, the European Union Intellectual Property Office (EUIPO) offers information to users regarding these deceitful invoices through the web page https://euipo.europa.eu/ohimportal/es/misleading-invoices, showing almost 200 examples of fake invoices received by trademark applicants. Additionally, since 2014 the EUIPO leads the ANTI-SCAM Network, where together with other national and regional offices, as well as Europol, it constantly holds meetings where this issue and its possible solutions are discussed.
From what we have been able to identify in the last few years, it is possible that in Colombia this practice is not as recurrent.
If you used an attorney to present your registered trademark request, you can safely ignore any notice you receive. This, because by having a proxy attorney registered in your trademark request, any notification sent by the corresponding trademark office regarding actions needed for the registration, deadlines, or any other pending matter will be directly sent to your attorney.
If you didn’t use an attorney to present your registered trademark request, it may be difficult to know what is official and what is not. A payment request is generally the biggest indication that the notice is a scam. The best way to ensure that you are answering something legitimate is to be on the look-out and verify the status of your trademark request on the website of the organization where you presented it. You can always contact an intellectual property attorney to help you through the process, even if you have already presented the request on your own.
In any case, if you receive any of these fraudulent communications and you have any concerns, consult with My Brand and we will be glad to advise you on the matter.
Finance & Technology Manager
Partner My Brand