Authors: Kursty Bansley, Gregory Forrest, Lorraine Pinsent
This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.
Update: This post was originally published on May 7, 2015, but these scams continue to be a problem. Yesterday, the Canadian Intellectual Property Office reissued its warning to holders of patent and trademark applications and registrations. We recommend that you ensure that your organization has processes in place to ensure these scam invoices are disregarded, including ensuring that you consult your lawyer, patent agent or trademark agent if you receive any type of correspondence relating to your patents, trademarks or domain names.
The Canadian Intellectual Property Office (CIPO) has issued a warning today to holders of patent and trademark registrations that they may be targeted by scam fee payment notices. These notices are designed to appear as if they come from CIPO and are thus more difficult to identify. The notice states that the recipient must pay a certain fee within a certain time frame or they will lose certain rights, such as having the trademark or patent registration lapse. While directed to registrations, applicants with pending applications should also be vigilant regarding such notices.
In our experience, these types of scams are common, and with the use of CIPO design elements represent a heightened risk. Scammers are able to identify patent and trademark owners because the Canadian Trademarks Database and the Canadian Patents Database are available to the public and easily searched online. Similar scams are known to target website domain owners.
Scammers profit by misleading rights holders into believing they must pay a small fee, often to renew their trademark or patent, register a domain name that corresponds to their trademark, or register or protect their intellectual property rights in another country.
It is always advisable to consult your lawyer, patent agent or trademark agent if you receive any type of correspondence relating to your patents, trademarks or domain names. As official correspondence is sometimes inadvertently sent to an applicant or rights holder instead of their agent of record, it is best to contact your agent whenever you receive such a document, to ensure proper review and that any necessary actions are taken in a timely manner.
We have collected several representative examples of the notices that have been received by trademark and patent owners, including samples provided by CIPO, which can be viewed below. Please click the image to see a full-sized version. You can also see the World Intellectual Property Organization’s database of misleading invoices.
© 2016 MLT Aikins LLP
Note: This article is of a general nature only and is not exhaustive of all possible legal rights or remedies. In addition, laws may change over time and should be interpreted only in the context of particular circumstances such that these materials are not intended to be relied upon or taken as legal advice or opinion. Readers should consult a legal professional for specific advice in any particular situation.