By Dalinee Bangaroo, Trade Mark Attorney/Solicitor and Clint Fillipou, Principal Partner

Phishing scams and email cons seem to be getting more and more convincing nowadays, don’t they? Well, we’re now seeing this unfortunate reality in trade mark portfolio management, and you need to be aware of the risks.  When it comes to having your trade marks in Australia and overseas managed by a professional services firm like Anisimoff Legal, standard practice and procedure requires that Anisimoff Legal be listed as your “Address for Service”, and the trade mark owner is also listed. This means that your Address for Service receives all relevant paperwork, but your address is also publicly available. Having your information publicly available and free online on registers like IP Australia’s Trade Marks Register means that you can be contacted directly by scammers.

Over the years, many scammers have operated this way, sending letters that are fairly crude, and in most cases (thankfully) ignored by sophisticated trade mark owners who either see the scam a mile off, or forward them to their firm to double check.   In recent weeks however, the number of trade mark scam emails circulating appears to have skyrocketed and with more sophistication. The most recent scheme involves emails being sent from “Trademark Registry Hub” or “Patents Registry Hub”, or similar.  These scam artists have misappropriated the identities of Registered Trade Mark Attorneys in an attempt to get trade mark owners to pay them to file a trade mark application on their behalf or otherwise they will file an application for a similar mark on behalf of a third party which has “recently approached” them. Falsely misappropriating the identities of real Registered Attorneys from reputable firms unfortunately increases the appearance of legitimacy of these scams.  We are in contact with these actual Registered Attorneys who confirm the scam, and who are as exasperated as the rest of the industry.

Another scam involves notices from the “European Patent & Trademark Protection (EPTP)” office (a fake office that does not exist) apparently based in the Czech Republic requesting payment for renewal of trade mark registrations together with a signature from the trade mark owner to approve payment of the renewal fees. By adopting the name EPTP, these letters may appear legitimate. If you have received such a letter, it is likely that you may have been duped into making payment of fake fees to defraud your business.

Be aware of some common features of these scam emails and stay prudent:

• A sense of urgency and scare techniques for immediate action;
• Dates that are inconsistent with other paperwork or reports previously received by your actual Address for Service;
• New names or new businesses that apparently claim to represent you, but that you’ve never heard of;
• Apparent needs to register new trade marks or upgrade your protection, when Anisimoff Legal or your other Address for Service has previously indicated that your trade mark is registered and not due for renewal for many years;
• Typographical errors and incorrect grammar being used; and/or
• The “legal advice” provided and associated legal rights referenced in the correspondence are inaccurate, erroneous or misleading.

Do not pay a cent

We understand that these emails and letters are alarming (and somewhat convincing) due to the level of accuracy in the letters when referencing your business’ information. Again, this information is publicly available, so scammers have access to some information they require to make their letters seem legitimate. However, it does not necessarily mean the sender is legitimate or that the threats or risks they speak of are real. If you receive any suspicious communication, DO NOT respond, contact us as we can help you discern genuine notices to scams.

This is what you are paying your actual firm to do

Remember, you have engaged your actual Address for Service, like Anisimoff Legal, to receive communications from the various trade marks offices, filter them, and seek your instructions. Also, to ensure your deadlines are not missed, and you have appropriate filings made in time.  If you are ever required to file something, pay something, or renew something, it will be a request from Anisimoff Legal. If you are ever concerned that someone may be impersonating your Address for Service, claiming to be Dalinee Bangaroo or Clint Fillipou from Anisimoff Legal, check in with your representative – send them an email to their last known email address, not the one in the letter you received (which is probably fake and designed to redirect you to the scammer), go to the firm’s website and find their direct line, etc.

Do not get scammed

Where we have been engaged to manage your IP rights on your behalf and we are the recorded Address for Service, official correspondence will typically be sent directly to our offices, which we will then report to you. Any correspondence that claims to be associated with a government department such as IP Australia or a foreign trade mark registry such as the World Intellectual Property Organisation (WIPO) should be considered carefully, as it should definitely come to us first.

Anisimoff Legal will contact you at the important stages of the trade mark registration and renewal process, including confirming filing, reporting examination (if any), notifying of early acceptance and formal acceptance, reporting registration and forwarding the Certificate of Registration, then giving your ongoing reports about your trade mark status and notifying you when it is time to renew, or if anything else pops up during the period of registration. We note that renewal of trade mark registrations is only due once every ten years and payment is required to be made by the trade mark owner. That being said, we will inform you six months prior to the renewal date of your trade mark to seek your renewal instructions and organise your preferred payment option of the official renewal fees. Scammers often target renewals and notify the trade mark owners before the renewal period even opens (which is 1 year before the renewal deadline). If you are unsure, we encourage you to check our letter reporting registration of your trade mark or our Quarterly Reports which list the renewal date, or just call us at your convenience to chat things through.

Contact us

We note this is a serious concern, but we reassure you that it has been brought to the attention of IP Australia by the Institute of Patent and Trade Marks Attorneys (IPTA). If you have any concerns or would like guidance on spotting these scams, please contact our trade mark attorneys.