We are delighted to report that there has been some good news in the fight against companies/individuals issuing misleading invoices which appear to be from the UK Intellectual Property Office (UK IPO) (previous IPcopy articles can be found here).
In this regard, a company trading as Intellectual Property Agency Ltd (IPA) and its director Mr Harri Mattias Jonasson were found liable for trade mark infringement and passing off and ordered to pay £500,000 plus legal costs to the UK IPO.
The IPA gave the impression that it was the UK IPO, or at least connected with it, such that it was able to convince owners of trade marks and patents to instruct the IPA to renew its rights at a cost of up to 6 times the official renewal fees.
Initially, the IPA and UK IPO sought to settle the matter, but the IPA was unwilling to provide the UK IPO with the undertakings it required. Accordingly, the UK IPO continued with the proceedings where it was held that the IPA deliberately set out to deceive intellectual property owners by issuing scam renewal notices.
For full details of the case, please see http://www.bailii.org/ew/cases/EWHC/IPEC/2015/3256.html.
Congratulations to the IPO for pursuing this matter and for their ongoing efforts to educate users of the IP system about the dangers of misleading invoices.
Whilst customer feedback suggests a reduction in scam renewal notices (848 cases in 2013 compared to 262 cases in 2014), given the list of example invoices provided at the EPO and OHIM, we suspect that it is actually the case that the problem is becoming more easily identified by clients or it is just not being reported to the UK IPO. In many cases, clients receive numerous invoices from a variety of companies within a short time frame (i.e. shortly after publication), such that the sheer number of misleading invoices may not always be reported.
This case will hopefully put others off from issuing misleading invoices, but we advise all clients to be vigilant and report such misleading invoices to their legal representatives, the UK IPO and the Action Fraud website.
Charlotte Blakey 11 November 2015