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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Scams and sharp practices typically target the weak or vulnerable, but brand owners are not immune. In recent years, busy in-house departments and SMEs alike have been taken in by “notices” requesting payments allegedly due in respect of registered or pending UK marks or CTMs, or offering non-existent “services” for the registration of marks that are in fact already protected.

These notices are typically swathed in official-looking branding and awash in small print, but the misleading messages they convey are clear enough. They are often designed to look like invoices for services already requested, and recipients can easily assume that the notices emanate from a known authority or trading partner and simply pass them through for payment.

Nebulous practices like these are common across the EU and national governments have yet to get fully to grips with the problem since, in most cases, the notices, while deceptive, have not been regarded as in breach of the law.

A breakthrough from the English courts, though, could now change all that. In a recent decision relating to deceptive renewal notices relating to non-existent contracts for printer and fax repairs, the High Court ruled that the sending of deceptive “scam” notices designed to look like something they are not can fall foul of Regulation 2 (1) of the Business Protection from Misleading Marketing Regulations 2008.

Trademark notices, of the type that could be viewed as scams or sharp business practice, are commonly designed to look like invoices for services that have already been sought when in fact they are nothing of the kind and are instead merely invitations to enter into a contract for the provision of either non-existent or unnecessary services. Consequently, the High Court’s judgment in London Borough of Croydon v Austin Hogarth ([2011] EWHC 1126 (QB)) appears to be relevant to trademark scams and sharp practices, too.

This ruling should be of interest to brand owners and governments throughout the EU, since the Misleading Marketing Regulations implement EU Directive 2006/114 on Misleading and Comparative Advertising. Consequently, if the High Court’s interpretation is right, trademark scam notices should be unlawful throughout the EU.

OHIM and national trade mark offices like the UK-IPO have been advising applicants and registrants about notices of this type for years, but as anyone familiar with scams will know, mere warnings are never enough. This recent development, however, may actually give teeth to efforts by the UK Office of Fair Trading and its counterpart agencies across the EU to tackle the senders of such deceptive notices and cut them off at source.