Our first article on misleading invoices was published in 2013. Four years on this issue is still unfortunately of relevance to all IP right holders who need to be aware of invoices received from unfamiliar companies.

Firstly, let’s recap – what are misleading invoices?

Misleading invoices are unsolicited mail from companies (and individuals) sent to patent, trade mark and design right holders. This unsolicited mail takes the form of official looking invoices that use abbreviations and logos that are designed to make it seem like the letter has originated from an official source. The companies sending these misleading invoices also often have company names that have confusing similarity to official Intellectual Property Office names, e.g. Patent & Trade Mark Organisation (PTMO) & European Patent and Trademark Publications (EUPAT)).

The organisations sending such invoices take right holders details from public records and then offer to renew registrations and/or add existing registrations to a database for a fee.

Types of Misleading Invoice

There are a few types of misleading invoices you could expect to receive if you hold any IP:

• An offer to renew your IP right. These organisations may charge far more than your IP representative would to renew your registration. Yet, unlike your actual representative, they do not serve as your ‘address for service’ to receive critical official and third-party communications on your behalf. Nor will they monitor your registration to ensure that you receive renewal reminders and other vital communications. These types of misleading invoice are particularly problematic for trade mark owners since the period between renewals is so long (10 years) and personnel may have changed since the last renewal making it harder to spot a misleading invoice.
• Entry onto an official sounding, but in reality totally unnecessary, register or publication.
• An offer to apply for an IP right on your behalf, e.g. an EU trade mark filing, again at rates that are far higher than your actual representative.

Top Tips – What should you do to reduce the risk of being caught out by a misleading invoice?

1. Always read the small print!

It sounds obvious but a quick look into the small print of these invoices is a good way to identify potential misleading invoices.

2. Know who your representative is!

You shouldn’t receive any invoices in relation to your IP from sources other than your IP representative or renewal agency (if you employ a separate firm for managing your renewals).

3. Check the lists of known issuers of misleading invoices.

It is possible to check the official IPO websites (see links provided below) to see if the company issuing the invoice is present.

4. Make sure everyone who will process the invoice in your company knows how to spot a misleading invoice.

Often misleading invoices can bypass the individuals who deal with your IP and go straight to your accounts department. Make sure everyone in your company knows who you should be sending you invoices relating to your IP.

5. Ask your representative.

And of course always contact your IP professional representative who will be able advise you if the correspondence you have received is genuine or not.

Further information

Previous IPcopy articles on this subject can be found here, and you can also visit the main IPO websites which have examples of misleading invoices that IP rights holder may encounter by selecting the below links:

• UKIPO
• EUIPO
• EPO
• WIPO

Kane Ridley 31 August 2017