Trademark holders: Be vigilant against scams

Fraudsters often demonstrate remarkable creativity in their schemes. For many years, trademark holders have been receiving correspondence soliciting payment of fictitious fees. Some letters closely resemble those issued by official organizations, creating confusion and leading to inadvertent payments. While courts sometimes hand down convictions for fraud, providing the necessary evidence remains challenging. It is undoubtedly safer to engage an intellectual property attorney to manage your trademark portfolio.

Understanding Trademark scams

Companies based abroad proliferate under names with official-sounding titles such as ‘EIPS – European Intellectual Property Services,’ ‘World Patent & Trademark Database,’ or ‘EUOIP European office Intellectual Property’ instead of EUIPO (European Union Intellectual Property Office). These deceptive names are carefully chosen to create an impression of legitimacy and official authority.

These entities target applicants for European Union trademarks, national trademarks, or international trademarks. Typically, an official-looking document requests payment of publication fees. The design and layout of these documents often mimic genuine correspondence from trademark offices, including similar fonts, logos, and formatting which can easily mislead unsuspecting recipients.

In small print at the bottom of the document, the most vigilant recipients may discover that the payment purpose is nothing other than publication in a non-official but actually existing database. This disclaimer, often printed in tiny font size and buried within dense legal language, provides the scammers with a defense against fraud allegations while continuing to deceive the majority of recipients who fail to read or understand these details.

How scammers obtain Trademark holder information

Fraudsters exploit the official publication of trademark filings to obtain applicant contact details. This information is publicly available as part of the transparency requirements of trademark registration systems worldwide. In some cases, they reproduce all publishedapplication data to enhance the credibility of their payment requests, creating documents that appear nearly identical to official notifications.

Although it is possible to challenge a fraudulent payment before courts, such proceedings are time-consuming. As a result, only large companies typically pursue legal action in another country. By that time, the scammer will likely have changed names and disappeared with their bank account. Multiple fraud convictions have been issued by European courts against companies offering services devoid of real value.

However, applicants frequently struggle to provide sufficient evidence of fraud and that they were misled. The burden of proof often requires showing that the correspondence was intentionally deceptive, that a reasonable person would have been misled, and that the service received (if any) had no legitimate value. These elements can be difficult to establish conclusively in legal proceedings.

Official warnings and resources

WIPO (World Intellectual Property Organization) dedicates a page on its website to reporting these scams. It even publishes examples of fraudulent letters sent to trademark holders. This public awareness initiative helps educate the intellectual property community about common scam techniques and provides a centralized resource for identifying suspicious correspondence.

Similarly, EUIPO publishes a ‘fake invoices’ page on its website. This awareness is important for those who file their own trademarks as well as other intellectual property rights (patents, domain names, etc.). Both organizations regularly update these resources as new scam schemes emerge, offering examples of actual fraudulent correspondence and guidance on identifying red flags.

The existence of these official warnings underscores the prevalence and seriousness of trademark-related fraud. Trademark offices worldwide have recognized this issue and taken steps to inform their users, but the ultimate responsibility for vigilance remains with trademark holders and their advisors.

Best practices for Trademark holders

Internal approval of invoices by each relevant department will prevent any improper payments. Establishing clear internal protocols for invoice verification ensures that multiple stakeholders review any payment requests relating to intellectual property rights. These procedures should include verification of the sender’s legitimacy, confirmation that the service was actually requested, and validation that the fees correspond to known official charges.

Internal legal departments know their service providers and the costs associated with a trademark filing. They should maintain a list of authorized vendors and official trademark offices, including verified contact details to verify suspicious correspondence. Any payment request from an unfamiliar source should trigger immediate investigation and verification through official channels.

By entrusting your trademark filings to a professional such as an intellectual property attorney, you gain assurance that all fees and taxes related to trademark filing are handled appropriately. The attorney manages your entire trademark portfolio, from creation to renewal, from monitoring to administrative or judicial litigation. This comprehensive approach provides multiple layers of protection against fraudulent schemes.

Professional trademark management offers additional security benefits beyond protection from scams. Attorneys maintain detailed records of all legitimate fees and deadlines, communicate directly with official trademark offices, and filter all correspondence to identify suspicious communications. They can furhter advise on legitimate optional services versus fraudulent offerings, ensuring that trademark holders make informed decisions about their intellectual property investments.

Identifying warning signs of Trademark scams

Several red flags can help in identifing fraudulent trademark correspondence. First, the sender’s name and address should be examined carefully. Legitimate communications come from official trademark offices or recognized law firms, not from entities with similar or misleadingly modified names. Second, payment instructions should be verified. Scam invoices often request payment to foreign bank accounts or through unusual payment methods rather than official government payment channels.

Third, the urgency and tone of the communication should be assessed. Fraudulent letters often create artificial urgency, threatening loss of trademark rights or missed deadlines in order to pressure immediate payment without proper review. Legitimate trademark office communications typically provide clear deadlines with sufficient advance notice and never threaten immediate loss of rights for non-payment of optional services.

Fourth, the nature of services offered should be scrutinized. Many scam schemes propose publication in private databases, trademark monitoring services, or registration marks in unofficial registries. While some legitimate private services exist, any unsolicited offer should be carefully evaluated. Official trademark fees are well-documented and transparent, and any payment request should be verifiable through official trademark office websites or communications.

The DE BAECQUE BELLEC firm provides comprehensive trademark management services, protecting clients from fraudulent schemes while ensuring all legitimate trademark obligations are fulfilled. Through professional management, trademark holders can focus on their business activities with confidence that their intellectual property rights are properly maintained and protected from both legal threats and fraudulent exploitation.

Stéphane Bellec, Partner

Intellectual Property Attorney

Email: sbellec@debaecque-avocats.com

Tel: +33 (0) 1 53 29 90 00