There has been a recent surge in telephone calls and emails from clients and members of the public who have received fake letters regarding their trade marks.
It seems a huge number of letters have been sent purporting to be from “TM Publisher”, a company who will publish your trade mark on their website, the “International Online Database of Registered Trade Marks”. While they will perhaps publish the mark somewhere, it is in fact a meaningless exercise that confers no rights or benefits, and is designed to trick you into handing over a fee for “publication”.
It can be difficult to spot a scam letter. Official organisations have functional names such as “Intellectual Property Office” which are commonly reduced to acronyms and can be easily imitated so as to deceive the uninitiated. Furthermore, most details about trade mark owners and their trademarks are freely available online through the various trade mark registers. This allows scammers to tailor letters to the individual “victim”.
Scammers will often put significant effort into their letters. For example, the recent scam letters have an address in Wellington, and an ANZ bank account number, which makes the letter seem legitimate. Likewise, scam letters sent out in Australia might have an address in Sydney.
However, following some guidelines will help you spot a fake letter. A close examination of the fake letters will frequently uncover inconsistencies, oddities and mistakes. For example, in a recent fake letter regarding fees for a Madrid Protocol application the letter requests payment of the fee in Euros. However, all Madrid Protocol fees are in Swiss Francs. In other cases, the payment might be to a foreign bank account. In this case, the phone number listed was clearly not a New Zealand phone number, despite the presence of other New Zealand details.
We note these are often details which may escape an applicant or owner. This emphasises the need to seek professional assistance if you have any concerns.
Tips for avoiding being scammed:
- Read all letters received carefully. Fake letter frequently contain spelling and grammar errors.
- Cross-check details such as organisation names and up-coming renewal dates with your own and official records.
- Ensure you confirm the full name of any official organisation rather than simply the acronym.
- If in doubt call your lawyer or IP professional. By having a lawyer or IP professional as your trademarks agent, any unsolicited correspondence from someone other than your agent will automatically be suspicious. An agent can also keep you informed as to key dates such as renewals.
- Any correspondence request payment should be treated with caution and checked for authenticity prior to payment. If in doubt, confirm by phone.
For New Zealand renewal requests, we recommend using Renewal Zone.
Renewal Zone is an online trade mark renewal service to assist people to renew their New Zealand trademarks quickly and affordably. You simply enter your IP number and Renewal Zone will tell you when your trade mark is due for renewal and the cost involved. You can then renew your trade mark through the site.
The site is linked to IPONZ’s trade mark register and is therefore secure, up-to-date and reliable.
Renewal Zone can be found at www.renewalzone.co.nz.
Important Changes to European Union Trade Marks
Changes are occurring in the EU with regards to trade marks. A new regulation has been passed by the European Parliament which takes effect on 23 March 2016 and introduces many changes into the European Union trade mark system.
The Office for Harmonization in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO). The Community Trade Mark changes to a European Union Trade Mark.
The definition of a trade mark is modified with the amendment of the graphical representation requirement. The practice will allow otherwise unregistrable types of trade marks to be registered such as smells or sounds.
An important change is the fee structure.
The current fee for up to three classes was €900. The new fee will be €850 for one class, €900 for two classes, and €1,050 for three classes. Additional classes after the third will remain the same at €150 per class.
Renewal fees are being greatly reduced and will now match the application fees above. The current renewal fee is €1,350 for up to 3 classes and €400 for each additional class. The new fee will be €850 for one class, €900 for two classes, and €1,050 for three classes. Additional classes after the third will be €150 per class.
Another important change is the way the European Union will interpret specifications when considering trade mark applications.
Currently, where the owner of an EU trade mark claims the class heading in their specification (e.g., for class 25, claiming “Clothing, footwear, headgear”), they are deemed to have protection for all the goods or services in that class. This applies regardless of whether the goods are actually listed in the class heading.
After 23 March 2016, class headings will be interpreted more literally. Such specifications will now be deemed to have protection for goods or services covered by the literal meaning of the items included in the heading of the class. This is more in line with New Zealand law, where class headings are treated literally and not as having protection for the entire class.
As an example, if a trade mark in class 09 contained the class heading, under previous EU law it would have been considered that “computer keyboards” were covered under the application. Under the new rules, as “computer keyboards” are not specifically listed in the class heading, that same mark would no longer have protection for these goods.
To that extent, this change may affect owners of EU trade marks which are registered in respect of an entire class heading. However, some trade mark specifications can be amended to include goods and services which are not included under the literal class heading. This can be done by filing a declaration prior to 24 September 2016, stating the owner intended to be protected for goods or services which fall outside the literal class heading.
If you have an EU trade mark application or registration and would like to discuss any of the above, please contact us. If you would like us to undertake a review of the specifications of your EU trade marks in light of the above, we are happy to provide a quote for this.