Beware of IP scams

Crown Law is aware that Queensland Government agencies have received unsolicited correspondence from various companies offering trade-mark registration, renewal and monitoring services. The correspondence can take the form of a letter or, in many instances, an invoice.

Unless the correspondence is received from IP Australia (the Australian Government agency responsible for administering trade marks), Crown Law or another law firm engaged by an agency, then it is likely the correspondence is a scam and should be ignored.

The nature of scams

A recent example of such correspondence was a ‘reminder’ provided by ‘Patent & Trademark Organisation LLC’ to a government agency regarding the renewal of a registered trade mark. Although some of the trade-mark details were correct, including the registration number, the reminder claimed that the registered trade mark was due for renewal by 16 June 2015 when in fact it was not due for renewal until 16 June 2016.

The reminder purported to charge the agency a total fee of $5385 to attend to the renewal of the trade mark in seven classes on behalf of the agency. IP Australia’s official costs to renew a trade mark in seven classes would be $2100; a legal practitioner or an agency can ordinarily attend to the straightforward renewal of a trade mark using IP Australia’s online services in a prompt and timely manner.

In this instance, even if the company did attend to the renewal of the trade mark on behalf of the agency, which is unlikely, the agency would have paid more than double the actual costs for such a renewal. This is clearly a scam intended to trick the recipients of the unsolicited correspondence into paying excessive fees for simple services.

What to do

If your agency receives unsolicited correspondence from a company regarding the provision of trade-mark registration, renewal and monitoring services and requesting payment for those services, the correspondence should be carefully reviewed or you should seek legal advice about the validity of the correspondence. Agencies are not obliged to use or pay for the services being offered.

The Australian Trade Mark Online Search System (ATMOSS) can be accessed by anyone online. As a first step, agencies can review the relevant trade-mark details on ATMOSS to confirm the current status of the trade mark, including the due date for renewal.

Agencies could also check the name of the sender against IP Australia’s list of companies known to send unsolicited requests. This list is not exhaustive as new companies purporting to offer various trade-mark services are regularly identified.

What this means for your agency

If your agency receives unsolicited correspondence, whether a letter or an invoice, and irrespective of how ‘official’ the correspondence appears, caution should be exercised before making any payments.

Even if the services being offered are required by your agency, it should be considered whether the agency can perform those services itself or engage a trusted legal practitioner to perform the services on behalf of the agency in order to significantly reduce costs.

As the unsolicited correspondence regularly takes the form of an invoice, it is common for such correspondence to be received by the accounting units in agencies. Agencies should ensure that accounting units are aware of this scam and that they know which agency officer such correspondence should be forwarded to for review.

The information in this publication is provided for general purposes only. It is not to be relied on as a substitute for legal advice. Crown Law and the Department of Justice and Attorney-General accept no liability for losses caused by reliance on the material in this publication. Formal legal advice should be obtained for particular matters.

Published: 7 May 2015

Author: Adam Hall