Those scams again: signs of progress

Apart from bees buzzing, lawn-mowers growling and [in England] wickets falling, one of the sounds of the summer is the chinking of wine-glasses as IP scammers come together to celebrate the gullibility or negligence of patent and trade mark applicants and the inertia or indifference of the legal authorities that leave them to their pestilential if profitable pleasures.   Readers who are new to this weblog or who do not know what is meant by IP scammers in this contest can read up here, here and here for a little background.

The fight against the scammers continues.  The first piece of good news comes from Germany, where IP blogger Michael Thesen (patent attorney at Beetz & Partner, Munich) posted this item under the heading "Scammy Trademark Registers - We're Ready to Rock and Roll!" While Merpel was most disappointed to see that it had nothing in it about either Rock or Roll, it was good news nonetheless. Writes Michael:

"It appears to be a lucky coincidence of circumstances that the IPKat has fantasized ... on fraud investigations initiated by a bank against scammy trademark- or patent registers sending out demands for payments with an "official" appearance to credulous applicants and that the OLG Köln has decided in the file 6 U 166/10 on such a case.

I think that every patent attorney has experience with clients coming up with this kind of letter and the WIPO holds an impressive register with samples thereof. Until now, I have simply recommended to throw the letter into the bin.

The intersting point for me in the OLG Decision mentioned above is that the plaintiff was a patent and trademark law firm. Yes, indeed, we are competitors of these people and are - ourselves - entitled to fire of all the competition law guns we usually fire off in the name of our clients in our own name. Here we go!

Besides, it's the overall appearance giving the documents an "official touch" which is considered an avoidable deceit on the origin thereof and thus the same legal concept as the one discussed in my last post, which turns out to be impressingly versatile".

Thanks, Michael, for letting us know about this -- and sorry it has taken so long to get round to sharing the news!

Broadgate Tower

Next, courtesy of Alasdair Poore (past President of the Chartered Institute of Patent Attorneys, author of the PPC Pages and a partner in Mills & Reeve), comes a draft of a letter which was never actually sent but which someone one day might just want to utilise.  This particular draft was to be aimed at an outfit called the Intellectual Property Agency which gives an address as 12th Floor The Broadgate Tower, 20 Primrose Street, London EC2A 2EW.  It reads as follows:

Dear Sirs 

Re: Intellectual Property Agency – Invoice for Renewal of Trademark 

We act for [ ] (the “Proprietors”)

The Proprietors are, as you know, the registered proprietor of the UK Trade Mark No. [ ]. You sent to the Proprietors a document dated [ ] purporting to be an “initial trade mark renewal reminder” for this trade mark – in fact at a time when no renewal could be made for the trade mark. 

On receiving this document, our Client believed it to be from the official government agency responsible for trade marks, the Intellectual Property Office, and, on the basis that he was entering into an arrangement with the government agency, signed the renewal document and returned it to you. 

The initial trademark renewal reminder is clearly intended to lead the reader to believe that it is from an official “agency”, in this case the Intellectual Property Office. Amongst other things, the use of the very similar title (“Intellectual Property Agency”), when the IPO is indeed a government agency, the logo in the form of the “scales of justice”, which is clearly intended to convey an official character, as well as the use of other features which are intended to convey official formality, such as the ADP number (the identification number of the registered proprietor at the UK IPO) are evidently designed to lead readers to understand that the organisation sending this reminder is the official government trade mark organisation. 

Accordingly, your letter contained false representations which were specifically intended to mislead recipients. In this case they did mislead the recipient. Accordingly your actions amount to an offence under section 2 of the Fraud Act 2006, that you made false representations that Intellectual Property Agency (the “IPA”) is the official government trade mark organisation (in this case in the UK), and your representations were clearly intended to make a gain for yourself and, additionally, cause loss to another. 

Furthermore, these actions also amount to an offence under regulation 6 of The Business Protection from Misleading Marketing Regulations 2008, by advertising the IPA in a way which is likely to deceive, and indeed has deceived, the recipient of the advertising. 

You may seek to assert that, if a detailed examination of the “renewal reminder” were carried out, it would be apparent that it was from a private company. However, it is clear that your intention was to deceive. There are many indications that you are not seeking to represent yourself as a bona-fide service provider. For example, in addition to the content of the “reminder”, your web site uses an “.org” domain – rather than “.com” or “.co.uk” which might normally be expected to be associated with private commercial organisations, and if you hover over the “INTELLECTUAL PROPERTY AGENCY” and “scales of justice” logo on your web site, it gives the name “European trademark organisation”. 

Accordingly it is clear that you are intending and expecting that recipients of your “reminder” will be misled into thinking that they are dealing with the official organisation. In the circumstances, in addition to the issues highlighted above, there is clearly no binding agreement between the Proprietors and yourselves to pay any sum, and you are not entitled to seek to invoice the Proprietors for any amounts. 

Please confirm therefore by return that you agree that our Client has no liability in relation to this alleged transaction. In the meantime, all our Client’s rights are fully reserved. You should be in no doubt that our client will fully resist any further claim for payment from you. 

Please acknowledge this letter by return, and provide the requested confirmation within 7 days, failing which our client reserves the right to take further steps to protect its position, without further notice. 

Please direct all further correspondence on this matter to ourselves, and ensure that your debt collection organisation does the same. 

Yours faithfully"

Finally the IPKat is delighted to hear from his tweeting friend @IPKenya that the Kenya Industrial Property Institute (KIPI) appears to be the first in Africa to publish a scam alert on its website. The alert reads:

"CAUTION -SCAM ALERT! 

It has come to the notice of the Kenya Industrial Property Institute|(KIPI) that certain unscrupulous entities and individuals have attempted to mislead users of the World Intellectual Property Organization's (WIPO) services into paying fees for services having nothing to do with the processing of their applications. These entities primarily target international patent applications under the PCT as well as users of the Madrid System for the International Registration of Trademarks. 

Applicants are therefore advised to treat with caution any invoices or other requests for payment of fees from entities whose identities cannot be verified or give rise to suspicion. 

For any further clarification, please contact the Managing Director by email at info@kipi.go.ke or kipi@swiftkenya.com or visit the WIPO website at http://www.wipo.int/pct/en/warning/pct_warning.html 

Dr. Henry Kibet Mutai, Managing Director"

Well done, Kenya! It's good to know that you're fighting the good fight!