10 July 2013Trademarks

OHIM warns over spike in “misleading” activity

The Office for Harmonization in the Internal Market (OHIM) has warned about a flurry of attempts to wrongly charge trademark owners for core services.

Users in Europe are receiving an increasing amount of unsolicited mail from companies requesting money for trademark and design services, including publication, registration or entry in business directories, a warning on the OHIM website says.

“If you receive a letter or invoice please check carefully what is being offered to you, and its source. Please note that the OHIM never sends invoices to users or letters requesting direct payment for services,” the notice continues.

An OHIM spokesman confirmed to WIPR that some entities have paid money to companies masquerading as OHIM, but could not confirm their identities or how much money they had lost.

OHIM has provided some examples of the unsolicited mail on its site, with alleged scammers using names such as “OHIM Trademarks and Designs Registrations Office” and “Central Patent & Trademark Database”. There are listed addresses including Hong Kong and Bulgaria.

On the Marques LinkedIn page, and reproduced on the class 46 blog, there is a notice singling out one company – “Community Trade Marks and Designs Ltd”, which uses a similar logo to OHIM, including a circle of stars around the name, on an invoice.

The same company apparently also uses the name “OHMI Office for International Registration Trademarks and Designs” – OHMI being the French acronym for OHIM – but a different logo is included.

Several lawyers confirmed that companies have tried to dupe trademark owners in this way for many years, and legal teams warn their clients about such behaviour when reporting on trademark registrations.

Chris McLeod, first vice president of ITMA and director of trademarks at Squire Sanders LLP, said: “The profession is well aware of this company [on the Marques LinkedIn page], although the latest trading style shows considerable bravado. We have personally seen many notifications from this company and from others, and some clients have unfortunately been caught out by this and other companies.”

He added: “We always tell clients to refer to us any correspondence about which they are unsure, but this does not always work. The UK Intellectual Property Office (IPO) and OHIM are also doing sterling work to publicise this growing problem.”

But Roland Mallinson, partner at Taylor Wessing LLP, said “that clients still have to ask us about them [notices] rather than just throw them in the bin means the warnings could still be made more prominently: somewhere even more prominent on the home pages of the IPO and OHIM websites would be good”.

David Stone, partner at Simmons & Simmons LLP, said it “astounds” him that criminal action has not been taken against what “is clearly a fraud” and that local police forces in the EU should take more responsibility for bringing the companies to justice.

OHIM is asking anyone who is suspicious about requests or who detects any new cases to check with their legal advisors or contact it on +34 96 513 9100 or at information@oami.europa.eu.

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