Trade Mark and Copyright Scams and other IP related "invitations"- Businesses Beware!

Scams are a feature of everyday life and business these days and I have a real problem with shonky operators trying to do people and businesses out of their hard earned cash, so thought I would share some tips with you about some IP scams and IP renewal invitations.

Trade Mark Scams

My firm registers a lot of trade marks and there are fairly regular IP scams doing the circuit, the most recent of which included emails to businesses from a bogus IP registration company indicating that:

They had received instructions to register a trade mark, but noticed that the recipients business had already been using it for a while, so they wanted to give them an opportunity to register first (how’s that for a conflict of interest and not acting in your client’s best interests??)
Pointing out all sorts of problems that would arise, including defending trade mark infringement proceedings and rebranding costing potentially thousands of dollars, if the business did not register the trade mark ASAP.

Like most scams these days they were fairly sophisticated and in fact included the names of real lawyers in Sydney, although their names had been used in conjunction with bogus IP registration companies. Needless to say the lawyers had not sanctioned the fraudulent use of their names.

I must have received at least 10 enquiries from clients about them, including from some businesses for whom I’d already registered trade marks, which only highlighted the random nature of the scam.

Copyright Scams

Recently I’ve become aware of a copyright scam emanating from a dodgy German company called RD Legal GmbH which trades as COPYTRACK. This appears to be a genuine company, although it is not a law firm as the name implies. It made the mistake of sending my firm an email alleging that they act on behalf of a bogus “rights holder” of an image which is on my website and indicating that the image is owned by their client and asking me to prove that I have a license to use the image, failing which a license fee will be payable to their “client”.

I pointed out that:

Their client doesn’t appear to actually be a genuine legal entity,
The image is in fact owned by another rights holder and I have a valid license.
If they decide to institute legal proceedings I will seek a punitive legal costs award against the claimant and/or their lawyers, and finally
Since they don’t have a claim, I would not be responding to any further communications.

I then received no less than 6 further emails, becoming more and more threatening and demanding payment of an amount of €350 for past usage and an additional €481.50 for an ongoing license, failing which legal proceedings would be instituted. Clearly the follow-up emails were computer-generated and my email had not even been read.

I ignored those further emails and received nothing further, but watch this space. They seem to work on the principle that if the amount claimed is not too significant and they are aggressive enough, then then some people will just pay to avoid the hassle. Apparently that tactic sometimes works.

Invitations to Renew Trade Marks or Business Names.

Trade marks are administered by IP Australia and business names by ASIC and they usually advise you a few months before expiry that you need to renew. However, there are a number of companies out there, which send reminders to people to renew their trade mark or business name, often 6 – 12 months prior to renewal for a specific fee.

These letters are technically legal, but set out the fee as a globular amount and this is significantly more than the actual IP Australia or ASIC fee to renew, as it includes the company’s management fee. However, they don’t point this out to you. The letters look very official and can create the impression that they are from an official regulatory body.

I had a client a few years back who proudly told me that he had renewed several trade marks through one of these companies after receiving a renewal letter, and I unfortunately had to point out to him that it cost him a couple of thousand dollars more than it should have. Renewals of trade marks or business names are so straightforward that I advise clients to handle the renewals themselves.

So how do you deal with scams or invitations like this??

If it relates to a trade mark or a business name and it doesn’t come from IP Australia or ASIC , then it’s either a scam, or possibly an invitation from an IP company to renew a trade mark or business name for a fee. In either case, don’t respond and please forward the document to me for advice - I don’t charge for this service.
If it’s a copyright scam, then
- ensure that you have a legitimate license to use images on your website or any electronic marketing materials. If necessary clarify this with your web developer or graphic designer.
- Assuming you have a legitimate license, feel free to forward the document to me, together with relevant details of your license and I would be happy to advise you on a suitable get stuffed response to send to the scam company - again no fee for this service.

As an endnote, you should be aware that there are legitimate claims made on a fairly regular basis for copyright infringement of images owned by well-known media companies. I’m aware of at least two recently, which resulted in claims being made via a large well-known Australian law firm. These are not scams and should be taken seriously.

Any queries, please contact us for further advice