Trade mark invoice scams

Hat tip to the IPKat for drawing attention to a recent High Court case, London Borough of Croydon v Austin Hogarth [2011] EWHC 1126 (QB), 5 April 2011 (unreported and not available on BAILII), in which Judge Mackie held that Regulation 2(1) of the Business Protection from Misleading Marketing Regulations 2008 applied to a computer maintenance contract masquerading as a renewal notice. This could be the solution people have been looking for to all those dodgy trade mark notices demanding fees that look as if they have come from a registry somewhere. Go read the IPKat's posting - no point in me repeating the facts here.

Scammers and the IPO

Trade mark owners continue to fall prey to scams masquerading as official agencies, writing to tell them their trade marks need renewing (not difficult information to come by) and obtaining a signature on a piece of paper that constitutes an instruction to renew at a fee practitioners would not charge in their widest dreams. Not illegal in itself, this technique relies on the fact that trade mark owners won't recognise an official letter: a practitioner would spot this at a glance.

When the source of the letter is a company called Intellectual Property Agency Ltd (although not a company incorporated in England and Wales) it's easy to see how someone might confuse it with the Intellectual Property Office. That institution directs complainants to Consumer Direct, though it seems to me that anything set up to help consumers (I include the Unfair Terms in Consumer Contracts Regulations, the Unsolicited Goods and Services Act, and the distance selling regulations) will be of no avail for the simple reason that anyone registering or renewing a trade mark is by definition not a consumer: only traders need trade marks - OK, let's say "undertakings" ... the connection between trade marks and trade was jettisoned in 1994.

Had the Office not been renamed, scammers might have found it difficult to pull the wool over anyone's eyes without using the words Patent Office and therefore committing an offence under section 112 of the Patents Act. But hang on - that section talks about using not only those words but "other words suggesting that his place of business is, or is officially connected with, the Patent Office". "Intellectual Property Office" is a "trading name" or something of the Patent Office, so surely using the name "Intellectual Property Office" is an offence - it suggests an official connection with the Patent Office. Changing "Office" to another word is unlikely to be enough to avoid the offence. So maybe some of these scams are more illegal than they look - but is anyone going to do anything about it?