The recent developments with the COVID-19 pandemic has given rise to an increase in fraudulent activities.

One of the new activities is a fake invoice letter that looks like a copy of an EUIPO decision demanding payment. This is not legitimate and must not be paid. By way of a reminder, Kemp Little advises all our clients to forward a copy of any invoices relating to their trade marks or design to us directly if you are in any doubt.

Example of scam invoice can be seen on the following link:

https://euipo.europa.eu/ohimportal/en/news?p_p_id=csnews_WAR_csnewsportlet&p_p_lifecycle=0&p_p_state=normal&p_p_mode=view&p_p_col_id=column-1&p_p_col_count=2&journalId=5691046&journalRelatedId=manual/

If you have previously filed a trade mark or design application, you will have no doubt also received ‘scam’ invoices or letters asking to settle fees associated with that trade mark or design. These often look legitimate and can confuse applicants with short deadlines, putting them easily and significantly out of pocket. Typically, such letters / invoices are either offers to renew the trade mark or design right at an over inflated cost or to enter it in to a private database, for which no IP right will arise, which may result in the legitimate trade mark or design being allowed to lapse unknowingly.

In order to assist Applicant’s, the EUIPO, UK IPO and WIPO have updated their list of ‘scam’ invoices / letters as set out below.

  1. EUIPO - https://www.euipo.europa.eu/ohimportal/en/rcd-misleading-invoices
  1. WIPO - https://www.wipo.int/madrid/en/fees/invoices.html
  1. UK IPO short list - https://www.gov.uk/government/news/warning-misleading-invoices-dont-be-fooled
  • The UK IPO requests that these are reported to Action Fraud.

However, these may not pick up new ‘scam’ invoices / letters and therefore Applicant’s must always be alert to any direct communications. In this regard, it is also worth noting that the EUIPO sends their correspondence directly to the EUIPO mailbox, and very rarely by post. Further, whilst the UKIPO may occasionally issue communications by post, these are mostly by email.

Finally, if you have engaged trade mark attorneys to file and protect your trade marks or designs, you should only receive invoices from them as they are in direct correspondence with the relevant Registries and are responsible for paying the official fees on your behalf. However, if you are ever in doubt, always forward a copy of any invoices relating to your trade marks/designs to your attorney, who will be able to confirm if the invoice is legitimate or a scam.

If you are interested to hear more about impact of COVID-19 on businesses and IP, and how we can help, please read our COVID-19 hub at: https://www.kemplittle.com/covid-19-your-business-continuity-issues/