Businesses face persistent threat from unofficial trade mark registers01 December 2014
- Despite progress via combined industry and government efforts, some forms of IP confusion persist
- 45% annual rise in UK businesses reporting payment requests from unofficial trade mark “registers”
- Contrasts with rapid drop in parallel problem of misleading “renewals” letters (cases down 29%)
While rapid progress has been made tackling more open types of fraud, there has been an annual rise in the number of brand owners receiving misleading demands for money to join unofficial UK trade mark registers, according to Intellectual Property Office figures.
At an average cost of approximately £1,000 per unofficial demand for payment, this phenomenon has the potential to cost the UK’s small firms a total of £1.25 million per year, just on unnecessary fees. However the true cost could be much higher as such registers alone offer no legal protection.
In the first three quarters of 2014 there were an average of 312 instances per quarter about unofficial organisations offering companies a place on their own “trade mark register”, unconnected to official registers of intellectual property.
This represents an increase of 45% compared to 2013, up from an average of 215 cases per quarter last year.
The growing issue of unofficial “registers” comes despite successful new measures to tackle the parallel problem of misleading “reminders” ahead of trade marks that approach renewal.
Chris McLeod, president of ITMA, comments, “Intellectual property is a vital ingredient in every business model. Small companies and big brands alike know that protecting their trade mark or design rights can be one of the best investments they ever make.
“Yet 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.”
Strong progress against misleading ‘reminders’
There has been rapid progress against other types of misleading organisations. This trend is particularly clear in wake of rulings by the Advertising Standards Authority against companies attempting to pass themselves off as the Intellectual Property Office (IPO) itself.
In 2013, there were on average 73 cases per quarter of misleading “reminder” letters about upcoming renewals of trade marks. These “reminders” also tend to contain a demand for payment, without the advice of a registered trade mark attorney and at a considerable premium to the actual fees charged by the Intellectual Property Office.
However this problem has abated considerably, since successful action in the second half of 2013 against limited companies named so as to closely resemble official government bodies.
In the first three quarters of 2014 the number of such misleading renewal “reminder” letters has dropped to an average of just 52 cases per quarter – or a 29% improvement in the space of a year.
Chris McLeod, president of ITMA, concludes, “Taking action against those who appear to be committing fraud is relatively simple – as demonstrated by this decisive and successful action by the IPO. Where the evidence is clear, the required course of action is also clear, and this is a developing success story.
“However, it is much harder to eradicate what are arguably worthless proposals which come without any qualified advice. Unofficial trade mark registers are essentially an issue of a costly lack of awareness about official routes to registration and maintenance of trade marks.
“Experienced, qualified, and registered professionals can review these notifications at a glance, to enable businesses to focus on the real legal protection that maintains hard-won brands and reputations. Registered trade mark attorneys routinely filter out misleading correspondence of this nature. Indeed, our members regularly advise their clients to ignore unsolicited mail such as these “reminders” and invitations to join such “registers” – which usually have little connection to genuine trade mark protection.”
Advice for all businesses or individuals who receive any such unsolicited communication regarding their trade mark or design rights, is to contact a registered trade mark attorney, or to visit the official website of the Intellectual Property Office as their first source of essential information.
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Notes to Editors:
The Institute of Trade Mark Attorneys (ITMA) is an independent body, founded in 1934, with the objective of promoting high standards of training, qualification and continued learning in the realm of trade marks and associated intellectual property law.
The Institute is responsible for the regulation of the Trade Mark Attorney profession under the Legal Services Act 2007, and for representing the interests of the profession, nationally within the UK and internationally. The regulation of the profession has been delegated to a separate regulatory arm which operates at arms length under the Intellectual Property Regulation Board.
More information on the Institute and the work of its members can be found online.
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Adam Kirby, Account Manager email@example.com 0207 427 1440