Information about when renewal fees
on patents and trade marks are due
is publicly available, and this has given
rise to a number of opportunistic
organisations which adopt names
similar to those of official government
bodies and send renewal reminders to
IP owners inviting them to pay fees at
amounts of up to five times the official
fee.
These organisations send renewal
reminder notices out well before the
proprietor would receive a reminder
notice from their incumbent renewals
provider. Where trade marks are
concerned, this can be as far as 18
months in advance. Since these
notices are deliberately designed to
deceive the proprietor, in many cases
the proprietor accepts them to be
from an organisation related to the
UKIPO, or from the UKIPO itself, and
pays the fee at an inflated rate.
The UKIPO has previously warned IP
owners that such organisations are
in operation, and more recently it
brought proceedings against one such
company, the Intellectual Property
Agency Ltd (IPA) for passing off and
trade mark infringement.
The Intellectual Property Enterprise
Court (IPEC) found that in many cases
IPA does pay the renewal fee on behalf
of the IP owner, and whilst it is guilty
of overcharging to the extreme, the
judge made the point that this in itself
is not unlawful. However, the judge
did find IPA guilty of passing off. Since
the recipients believed IPA to be an
official government body, as was the
intention of the IPA, they responded
to the notices in good faith and on
the understanding that they were
paying an official fee. Furthermore, the
judge ruled that IPA had infringed the
UKIPO’s registered trade mark, and
as a result ordered compensation of
£500,000 to be paid.
Baroness Neville-Rolfe, IP Minister, said
of the ruling, “I welcome this judgment
and the stiff sanctions. Deliberately
misleading consumers into thinking
they are engaging with an official
government agency is a very serious
matter. Such misrepresentations of
this kind will not be tolerated.”
Whilst the UKIPO’s action is a positive
step forward in preventing these
organisations from engaging in such
practices, it also serves as a stark
warning to owners of intellectual
property to be extremely vigilant when
engaging with renewal agencies. If you
are approached by any organisation
that you do not recognise or which
is quoting fees which appear to be
higher than you would expect them to
be, or if you receive a renewal notice
well in advance of when you ordinarily
receive them, then tread carefully. We
would urge you to query anything you
are uncertain about with your attorney
or renewals service provider.
Beware the IPO scam renewal
organisations
Maintaining patents, trade marks and registered designs in the UK requires the
timely payment of official renewal fees to the UK Intellectual Property Office
(UKIPO). Many organisations employ an intellectual property renewals service to
notify them of forthcoming renewal requirements and to pay renewal fees on
their behalf.
To find out more
contact Joseph Mackey
Renewals
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