Go to jail. Do not collect your trade mark “fees”.
Author – Rebecca Davis
That is essentially what happened in a judgement issued by the Svea Court of Appeal in Stockholm last month.
This case involved twenty people who were charged with fraud as a consequence of their involvement with the issuance of fake trade mark invoices purported to have been sent out by OHIM (now the European Union Trade Mark Office). The invoices were sent to several hundred recipients from several different countries.
What did they all have in common? They had all applied to register Community trade marks at OHIM.
Unfortunately, this is not uncommon and unsolicited approaches for money from seemingly official bodies is the bane of many trade mark practitioners’ lives. Such approaches, as would seem to be the case in the Swedish proceedings, are usually activated by the filing of a trade mark application at a Trade Mark Office. Details of the application are then made available to the public and this appears to be the trigger for such companies to generate official looking documentation requesting the payment of “official” fees. The fact that the request is sent directly to the applicant, even if there is a representative on record, simply exacerbates the problem.
This is a particular problem for unrepresented applicants since they may be more intimidated by the request and make the payment. Practitioners are used to this and alert their clients accordingly. Indeed, I received such a request shortly after filing my own UK trade mark application back in September 2017. Needless to say, the request was filed in the bin!
Until now, trying to eliminate these approaches has been a little like a game of Whack-A-Mole where you seemingly get rid of one “mole” only for another to pop up shortly thereafter. Indeed, this is such a problem that the EUIPO even has a page – https://euipo.europa.eu/ohimportal/en/misleading-invoices – designed to assist in the identification of scam invoices.
However, the judgment in Sweden may deter others from this kind of scam. The Court of Appeal sentenced four of the protagonists to jail and approved all claims for damages sought by recipients who had made the payments.
The Office has prepared a summary of the judgement which is available here.
This is a welcome development and one which we hope will act as a deterrent to anyone intending to act in a similar fashion.
But what can we take away from this and will it actually make a difference in practice? The Swedish prosecutor was supported by the EUIPO and MARQUES (the European association representing the interests of brand owners) during the investigation and it is clear that the trade mark community is united in stopping these scams. However, even if the “moles’ have disappeared, who’s to say that we won’t be facing Groundhog Day in the not too distant future? For now, all we can do is remain vigilant and, if you are ever in any doubt about whether an invoice is genuine, don’t pay until you have checked its authenticity with your trade mark advisor.