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!

Another day, another bunch of scams

This weblog, together with its cousin the MARQUES Class 46 weblog, has been campaigning in recent weeks for something to be done in order to combat the unfair and deceptive business practices which prey upon intellectual property owners and applicants by sending them purportedly official communications requiring them to pay sums of money or by inviting them to commit themselves to valueless directory entries.

The thing which has most shocked this Kat -- who is not easily shocked -- is the level of indifference and inertia which has greeted these efforts.  He has received emails from IP experts, assuring him that "it's not clear how exactly they can be stopped" [which of course is a reason for doing nothing],  this "these practices are not new" [What's that got to with it? There's no novelty requirement for a scam, is there?], that they have "known about them for years" [but have they found a way of warning their clients?] and even that it was counterproductive to write about these things since it would give people ideas as to how to make an easy buck.

Not everyone is so complacent.  One correspondent, who sadly has to remain anonymous even though he works for an organisation which itself works to draw the attention of potential victims to the existence of their predators, writes:

"I noted your call for research on the impact of such misleading invitations. And while the attached judgment in the Florida case [State of Florida v Federated Institute for Patent and Trademark Registry (FIPTR), see also petition for certiorari here] does not count as true research, it is my contention that it gives a snapshot of the kind of impact that such invitations can have and are having. For example, you can see the number of payments received in the period in which FIPTR operated and the amount ordered by the court to be reimbursed to those who had paid. If you extrapolate the Florida result to the other jurisdictions in which such scams are operating over the number of years they have done so, you can get a sense of the blight they are on the IP system".

The scammer in this case was ordered to reimburse his victims to the tune of US$2,587,771.29; he was also ordered to pay a civil fine of $2,116,500 in respect of the 1,411 victims duped by his activities. The acts committed by him fell firmly under the Florida Deceptive and Unfair Trade Practices Act, chapter 501, part II, and the state Attorney General had a clear basis on which to proceed.

Another correspondent, writing from London, says:

"...   We have still been receiving three or four scam invoices a week - our team assistant has been putting them straight in the rubbish bin now!

Good luck with your battle. I was incredibly frustrated trying to report the scam invoices - the Government Fraud group did not want to know because we had not been a victim (because we had not actually paid any of the invoices). I told them that was a bit of a silly approach to take as surely they should be just as interested in the scams. But 'the computer said no'."

The Kat wishes he could be surprised by this attitude. The same correspondent sent him this demand from W.O.I.P. (a sort of WIPO for dyslexics), which uses a pretty close version of WIPO's new and -- it seems -- hopelessly unprotectable logo. It gives an address for payment by cheque which is 2-4 Great Eastern Street, London EC2A 3NT [this blog probably has dozens of readers within a 500 metre radius] and payment by money transfer may be made to an account held with the Royal Bank of Scotland International Ltd (motto "Here for you"), which presumably satisfies itself as to the bona fides of its business account holders.

Well, criminal and civil enforcers, legislators, government ministers, backbenchers, policy-makers, diplomats, people who have influence and can pass legislation, people who can enforce it -- here's a challenge to you.  Do you have the will, the wit and the wisdom to stop these scammers?

Anti-scam: a call for cooperation

Defenceless users of IP registration
systems benefit from better information

The MARQUES Class 46 weblog carries today a short post here, announcing the barest of beginnings of a list of websites that provide warnings and useful information for trade mark owners who wish to avoid being duped into making unnecessary and sometimes quite fraudulent payments for what they are misled to believing to be official services or valuable directory listings.

At present the list (which you can access here) is distressingly short. Information is provided from the World Intellectual Property Organization (WIPO), the Office for Harmonisation in the Internal Market (OHIM), the European Patent Office (EPO) -- apparently via a page which can only be accessed by those in possession of a user name a and password -- and a small number of national or regional offices.

Information and advice on these websites is sometimes excellent, but too often falls well short of what this Kat regards as acceptable. Most have few links to other sites that provide further or similar information about scams, unwarranted demands and unsolicited offers; some lack contact details. Some are difficult to use and all could be improved simply by borrowing the best features of each others' sites.

The IPKat says, here is an easy way to help small, medium-sized, big and outsized IP owners, which need hardly cost anyone a penny:

(i)  every rights-granting office should provide an email address and phone number so that anyone who thinks he or she is being conned can either check up to see if the demand comes from  known source or at least alert the office in question;

(ii) each office should host a web page with as much useful information as it can muster, which can easily be found by a non-professional searcher who uses site-search terms like "scam";

(iii) the offices should have a LinkedIn group or other shared resource which enables them to communicate with one another, either when letting each other know of latest scams and payment demands or, as can happen, when conferring as to the legitimacy of a particular practice or the bona fides of a business that practises it.

Meanwhile, please let Class 46 know of any other national or other warning sites which it can add to its little list. That way, we can all work together to improve the position of the most vulnerable and unsuspecting of our rights-owners.