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Out-Law News 1 min. read

Brand owners warned over misleading requests for trade mark payments

Brand owners have faced a 45% increase in the number of requests this year for payment from unofficial trade mark 'registers' that provide no actual legal protection, according to the Institute of Trade Mark Attorneys (ITMA).

During the first nine months of 2014, unofficial registers' requests for payment totalled 312 on average per quarter, up from 215 such cases per quarter that were record in 2013, the ITMA said.

It said that the unofficial registers ask businesses for approximately £1,000 on average to register their trade mark, but that businesses who pay the fee do not obtain the legal protection given by registering with official trade mark registries.

Chris McLeod, president of the ITMA, said: "Many organisations, particularly smaller businesses, lack the resources to distinguish truth from fiction when they receive letters or emails asking for payment. Those operating misleading 'registers' tend to offer unsuspecting businesses the prospect, at a considerable cost, of featuring on their own unofficial lists of trade marks or designs. However these lists often aren’t even publicly available – and they certainly provide no legal protection for trade marks or designs."

"Eradicating this confusion will rely on greater awareness – by contrast to simpler situations where fraud and passing off are more blatant. The Intellectual Property Office has recently made great progress clamping down on the most clearly fraudulent misleading messages. Yet unethical groups are still finding more subtle ways to seed confusion – and profit from ignorance," McLeod said.

The ITMA said that the payment requests are a growing problem at a time when brand owners have otherwise seen a general reduction in the number of letters they have received that make misleading demands for payment of trade mark renewal fees. There has been a 29% reduction in the number of such letters over the past year, it said.

Trade mark law expert Jo Alderson of Pinsent Masons, the law firm behind Out-Law.com, said: "We are sent these misleading renewal reminders by clients on an almost weekly basis asking if they have to be paid. These false registers appear to target the owners of newly registered marks, hoping they are new to the process and do not know better, and those whose marks are close to renewal who will be expecting to pay fees."

"If in doubt you should send the invoice to your trade mark attorney or legal advisers for confirmation. The UK Intellectual Property Office (IPO) will also be able to help. As a rule of thumb, if you filed for your trade mark through a trade mark attorney, the only invoice you should receive is from your trade mark attorney or legal adviser that instructed them for you. If you filed the trade mark yourself, you should only pay invoices sent by the IPO, for UK marks, OHIM, for Community trade marks, or the relevant trade mark registry for other jurisdictions," Alderson said.

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