Those of you that are brand owners will, no doubt, have received many ‘invoices’ over the years from the myriad of unscrupulous organizations that trawl the trade mark journals for new ‘victims’ to whom they will send an ‘invoice’ (or at least something that will look like an invoice to an accounts team). In essence there are two main approaches that these organizations take:
- The organization will pick a name that looks, to the layperson, as if they are actually the trade mark registry, for example (and I have made up this example) something like ‘European Trade Mark Office’. This will feature at the top of the ‘invoice’ and will then require payment of a certain sum, the idea is that the brand owner pays the ‘invoice’ assuming that it is paying the relevant official fees for its application. In actual fact if one reads the incredibly small small-print it becomes apparent that they are not an official body at all and are simply offering (paraphrased from memory) ‘the opportunity to be featured in the [insert dodgy organization name]’s journal of trade marks’. Now, whilst I’m sure these make for cracking bed time reading, they are completely worthless to the brand owner who has unwittingly paid out hundreds of Euros to be listed in a journal that nobody reads.
- The second version of this ‘scam’ is the scourge of national trade mark owners. This method involves the organization sending ‘invoices’ to national trade mark owners offering to upgrade their mark to a Community Trade Mark. Again the ‘invoice’ and covering letter look very professional, accounts teams will often simply pay these out on the assumption that they are settling the official fees of their application. The shrewder accounts team will review the letter and see that the offer is simply to file an application to the OHIM, again they may pay the same, seeing it as a cheap way to obtain a CTM. However all you are actually paying for is for the organization to copy and paste the details of your national mark on to a CTM application form and send it to you to file (you will also have to pay the official fees of €1,050), for this copying and pasting you are then asked to pay a princely sum of around £500.
I cannot stress enough that trade mark owners need to be extremely vigilant regarding these ‘invoices’. I recall a client some years ago, I had obtained a number of trade mark registrations for the client and warned my contact at the client about such ‘invoices’ and the need to be aware of them and to update his accounts team. Unfortunately for this particular client the contact was off on holiday the next week (for 3 weeks), he failed to advise his accounts team of this and on his return found that nearly £15k had been paid out in respect of these ‘invoices. The client phoned me (he was quite calm at this point) to let me know that he had settled the invoices from [dogy organization] at which point I had to break the news that these were scams and that he needed to get on to the bank ASAP to stop the transfers. I am happy to say that he did manage to stop the transfers however it goes to show how easy it is to fall foul of these ‘invoices’.
Over the last couple of weeks I have seen no less than 4 letters from a company trading as TMTEAM (please see copy of one of these ‘invoices’ below). These would fall into my second class of ‘invoices’ described above i.e. all that TMTEAM are actually doing is copying and pasting the details of your national trade mark onto a CTM application form and sending the same to you to file. The cost of their services for this? a cool £410 plus VAT.
Those of you that have representatives listed in respect of your marks can be reassured that all correspondence (which would include payment requests, renewal details etc) will be sent by the IPO/OHIM/etc to your representative and that your representative will then liaise with you to action such requests. Therefore you should never receive such requests directly from the IPO/OHIM/etc. If in any doubt please contact your trade mark representatives, if you don’t have any then I would suggest that you should, but in any event ignore these ‘invoices’.