A recent report from the ACCC quoted $340 Million worth of combined financial losses for individuals and businesses in 2017 due to scams. Today, we’re hoping to help put you on notice about the sorts of things that you might be receiving that you should be extraordinarily wary of.
A lot of the scams that we’re going to be talking about in this episode relate specifically to trademarks and intellectual property so joining us to discuss this topic is Grace Yi from our Trademarks Division here at Aspect Legal.
- A warning for trademark owners
- Be careful about engaging people online as a result of an email
- Watch out for random invoices from some international registration
- Be wary of TM renewal notices that are too early or too expensive
- Remember that TM are jurisdiction by jurisdiction
- Stay vigilant and when in doubt, ask a professional
A warning for trademark owners
Grace: The issue that’s causing this is that with trademark owners your details are publicly available on the trademarks register. It’s an unfortunate result of the trademark register operating in that way. If you’re a trademark owner, you’ve got to be extra vigilant because you’re a target.
Joanna: A lot of these things that we see actually look quite legitimate on the face of it. Some of them don’t look as legitimate. Sometimes they’re obviously not. They can be quite different from one another.
But generally speaking, what happens is we have an email that comes to a company that is noted as the owner of the trademark and the email says something like “We are a Chinese domain name registrar. We’ve received a registration application from some other company.” They say that this other company wants to register your brand and some domain names, but they’re giving you the opportunity first to let them know if your company is cooperative for that and whether you have verified the applicant to use these names. All of this seems quite well legitimate.
Be careful about engaging people online as a result of an email
Grace: Obviously, these people have gotten your details from looking up the domain name registry, because all of your details are available publicly of course if you’ve got a domain name. The issue is you might have no interest in getting a domain name in these other countries at all and it’s a scam. If you get this sort of email, you should just ignore it.
Joanna: Here’s why we have the name of spam and scams for this podcast because scam has a very deep connotation to it. It may very well be that all these businesses are trying to do is find creative ways, perhaps not particularly truthful, but creative ways of soliciting your business to use them to grab a, in this instance a Chinese domain name for your business, or maybe they might be trying to get you to register a trademark in their jurisdiction.
It may or may not be a full on scam. But certainly, it’s spam because it’s unwanted. Unless you’re dealing in China and you’ve decided that you want intellectual property protections there through trademarks for example or domain name registration, it’s probably completely unnecessary for you.
Grace: But in any case you should still check it out and make sure that your choosing the service provider yourself rather than responding to unsolicited requests for you to engage their services because the worst case scenario is that they’re not even a real company and you get nothing for paying for something so you should be really careful before you engage anybody especially over the Internet as a result of an email.
Joanna: And the fact that we have seen so many different versions of these type of email and here we’re talking about China, but it’s not always China. They come in from all sorts of different looking jurisdictions. But the answer is still the same. If you get an unsolicited email that talks about someone else getting onto the register before you with a domain name or a trademark and do you consent? Look, in reality no one’s going to ask you that. There’s the trigger there that it’s some sort of scam. Let’s talk about what else we’re seeing Grace.
Watch out for random invoices from some international registration
Grace: This type of letter is so common that I’ve actually got an email ready always to go to clients if they come and ask me about it. We always do warn them before it happens as well but they still pick up on it, which is always good that they’re picking up on it.
Essentially what happens is if a client decides to go ahead and register a trademark, some time during the trademark process once their application has been published they’ll receive a letter with an invoice from an international trademark firm or registration company offering for them to help them get a trademark overseas and there will be an invoice for quite a huge sum of money. The client will contact me and say ‘Is this for real?’, ‘Do I need to pay for this?’, ‘I wasn’t aware of these sorts of cost’ and I’ll always have to tell them this is spam.
Joanna: This is not from us! And that’s one of the issues sometimes when organisations receive these invoices quite often, an organisation just feels they need to pay it and especially if it ends up somehow in the accounts payable department and the accounts payable doesn’t have a strict enough process around invoices they’re paying. I guess that’s certainly where the risk is.
But we’re certainly not saying that international registrations aren’t a good idea. This is a good time for us to emphasize that receiving these notices can sometimes be great in terms of reminding you of something you may have forgotten about in terms of thinking about overseas jurisdictions that you may want to register in. The point is not to do it with these companies that are contacting you in unsolicited ways because quite often you may not be receiving what you assume you’re receiving. You may receive nothing.
Grace: That’s right. It’s such a known situation that IP Australia have dedicated a page of their website listing all the organizations that they’re aware of that engage in this sort of behaviour. I always send clients a link to that page as well so that we can check if the invoice that they’ve received is among that group of companies, and quite often it is.
Joanna: And if it’s not, we encourage you to keep sending these scams and spams through to us. We forward them on to the appropriate bodies. I think it’s important for the governmental bodies to be able to keep building these registers of our spammers and scammers so keep sending them back to us. But perhaps a good thing to do when you receive these is to use it as a trigger. Are there some other things in relation to my trademark I should be thinking about from an international perspective? And if so, talk to someone who is legitimate. We’re happy to talk at any point. Just ask us.
Grace: And maybe just to point that if you’re ever receiving an invoice about your trademarks generally they’ll always come on government letterhead if their IP Australia based if it’s to do with your Australian trademark or it will come directly from us. Anything above that or beyond that you’ve got to query it.
Joanna: Absolutely. For all of our clients, generally speaking it will always come through us so certainly if you’re listening to this and if you receive anything that hasn’t been forwarded from us just assume it’s spam or scam or contact us before you do anything with it.
Be wary of trademark renewal notices that are too early or too expensive
Joanna: One of these spams or scams that came to my mind as you were talking about the last one Grace was trademark renewal invoices. We’re seeing those as well out there aren’t we.
Grace: Yeah, that’s right. The thing with trademark renewals is that you have a 12 month window from the final date that the trademark is due for renewal. What we’re finding is that these spammers are contacting clients much earlier than that. Before the clients even turn their attention to the fact that it’s due for renewal, these spammers are getting in there quite early and getting money out of trademark owners that way.
Joanna: The way that works generally, assuming you paid them and assuming any part of the money actually goes to the renewal process, generally speaking they’ll whack a really large fee on top of it as well. We’ve seen instances of businesses who have thought that this was how much it cost to renew their mark when in fact the actual costs of renewing a mark are actually quite low. Once again it’s all part of the box and dice. If you receive something you’re not sure, let us know because we’ll probably have seen it quite a few times before.
Grace: That’s right. It’s a timely warning and reminder.
Remember that trademarks are jurisdiction by jurisdiction
Joanna: One other that came to mind for me, before we wrap up is the business registry or directory listing scam and/or spam. I haven’t actually seen this one in the last few months but this was going around quite a bit in previous years.
The way it worked was you would receive a notice that required the payment of a certain amount of money in order for your directory listing not to expire and sometimes it was worded in such a way that it actually looked like trademark. But in fact it was really only offering to give you in return for your payment of 1500 dollars or whatever it was, a directory listing on some international directory. But their correspondence looks like you’re actually getting the renewal for an international trademark.
Trademarks are one of these types of intellectual property protections that are a jurisdiction by jurisdiction protection. You should certainly be wary of anything, not just unsolicited and from someone that’s not us, but also the talks about a complete international registration because that effectively doesn’t exist.
Grace: It doesn’t exist.
Joanna: Yeah. I had a few excited people contacting me saying you can now get international registration and I’m like no. This is a spam or scam I have to say. So who’s getting targeted, Grace? It’s all sorts of people isn’t it?
Grace: Yes, but sadly the vast majority of people losing out seem to be the SME’s which is very unfortunate. It seems that they must just have less resources to stay on top of these things probably just a good reminder that it can be as simple as just turning your attention to what is this that I’m being invited to pay for.
Joanna: It seems so simple but when businesses are busy and particularly if they’ve grown quickly and suddenly are taking on a whole raft of new expenses, which is what happens with growth organisations sometimes. Sometimes invoices that aren’t legitimate that look legitimate can accidentally get caught up in the pay cycle and we’ve certainly seen that happen a few times before and people haven’t inquired with them before paying but inquired afterwards.
But I just wanted to add, I completely agree that there is a big risk there for SME’s and particularly those in growth phase but also we have some very large clients who have also been tangled up in some of these issues and in some instances, paid and in some instances, contacted just before the moment of payment and we’ve been able to to help them pull it back.
These emails don’t seem to discriminate really. If you’ve got a trademark registration you, as the owner have your details public, and certainly if your business holds a domain name that is also generally publicly searchable. This might trigger you to be the recipient of a number of these types of communications so the advice from us, Grace?
Stay vigilant and when in doubt, ask a professional
Grace: Yes, be careful. It’s really good that these scammers follow a pattern. It’s easier for us to help our clients be on top of it. Just like in the general public sphere rather than the business sphere. We’re all aware of these scams that come out of Zimbabwe.
Joanna: Not necessarily. I think these days they can come from almost anywhere. But it’s a good reminder to be vigilant. I think this ACCC report is a really interesting one, talking about the $340 Million in losses so just a reminder, stay vigilant. If ever you’re unsure, just ask us. We’ll just answer it for you. As they say, we’ve probably seen most of them before so we can give you a very quick answer.
Thanks again for tuning in to our Quick Tips today all about spam and scams in trademark. If you’d like more information about this topic, just head over to our website at talkinglaw.com.au and through that website you’ll also be able to contact our lawyers at Aspect Legal if you’d like help with any of the items we covered today. Take advantage of a 15 minute free call with any of our legal eagles if you have particular issues that you want to discuss. Well, that’s all for today. Thanks again for listening in. You have been listening to Talking Law brought to you by the commercial legal practice, Aspect Legal. See you next time!
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