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Thursday, September 4, 2014

Patently false: the rise of fake renewal notices

By Kimberley Evans, Associate, Trade Marks Attorney

We frequently receive emails and telephone calls from our clients asking whether a patent or trade mark renewal notice from 'generic company name including reference to a patent or trade mark registry' such as Patent and Trademark Organisation is legitimate and should be paid. Our standard response is that, as our firm is the address for service for that patent or trade mark, clients can ignore any renewal correspondence that requests payment and is not issued on our letterhead. There is an increasing number of organisations that send out these 'renewal notices' and IP Australia warns against unsolicited renewal services on its website.

However, we were delighted to learn that the UK Intellectual Property Office (UKIPO) has gone one step beyond warning IP rights holders in the UK about these devious companies. In May this year, UKIPO filed a claim for passing off against two of the most blatant offenders, 'Patent and Trademark Office' and 'Patent and Trade Mark Organisation'.

In late August 2014, UKIPO happily reported that the persons behind these companies had agreed to be bound by an Order of the Intellectual Property Enterprise Court, which means that if either offender issues deceptive renewal notices to IP rights holders that offer to renew the IP right for fees greatly in excess of the official renewal fees and which mislead consumers into thinking that the notices originate from UKIPO, the offender(s) will be in contempt of court and liable to imprisonment.

UKIPO has also commenced proceedings against another organisation with similar business practices but that other organisation remains unnamed. In its announcement, UKIPO stated that it had pursued the proceedings because UKIPO 'felt it was necessary to take appropriate action given the evidence that our customers are being misled or confused and that damage is being caused to the office’s good name.'

'Hear hear!', we say. Australian law features the tort of passing off and also has the bonus of consumer protection provisions under the Australian Consumer Law. We wonder whether IP Australia could do something similar against the organisations that are misleading Australian patent and trade mark owners with similar misleading and confusing renewal notices.

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