Unofficial trade mark registration services & other unsolicited offers of registration

The Institute wishes to draw attention to the advice and guidance on the websites of the key registration authorities; the IPO – Intellectual Property Office who maintain the register of UK trade marks; OHIM – the authority maintaining Community Trade Mark registrations and WIPO – the World Intellectual Property Office, who are instrumental in worldwide registration of trade marks.

Gillian Deas, President of ITMA said: “Anyone receiving unsolicited mail about registration of trade marks should seek advice either from the appropriate authority or from registered trade mark attorneys, and in particular members of ITMA. A list of all ITMA members is available on the ITMA website at www.itma.org.uk and members can be found from the home page by a post code or county search”

“For the avoidance of doubt, the Institute is not aware that there is anything illegal about these letters or the activities in question.  However, many of the “registers”, for entry onto which these letters invite companies and individuals to pay a fee, have no legal effect.  Indeed, this is often made abundantly clear in the relevant terms and conditions.”

“It is also worth distinguishing the unofficial “registers” from unsolicited offers of registration, such as those offered by Community Trade Mark Filing Service/CTMFS.  This company will, for a fee, prepare a CTM application based on the details of a corresponding UK application or registration but will not file the application or pay any official fees. If in any doubt get in touch with a trade mark attorney who will be only too happy to advise.”

“We are reproducing below the advice on each of the main authority websites, bringing together, for the first time, all advice this matter.

The IPO website has the following warning on its website at: http://www.ipo.gov.uk/types/tm/t-applying/t-after/t-unsolicited.htm

“Warning: unsolicited mail about unofficial registration services

We are aware that some companies and individuals are sending out unsolicited mail to applicants and owners of UK patents, designs and trade marks inviting them to apply for entry in various (sometimes official sounding) publications and “registers” in return for payment of a fee. These parties tend to make their offers in the form of invoices, which are usually sent out after the publication of the official UK patent, design, or trade mark application. You should be aware that these companies are not linked to any Government or Community Institution and there is no obligation to pay them.

The only offices that are able to provide legal protection for patents, designs and trade marks in the UK are the Intellectual Property Office itself, the European Patent Office and the Community Trade Mark Office (more formally known as the Office for Harmonisation in the Internal Market - OHIM).”

The Community Trade Mark Office has examples of invoices and the following message at http://oami.europa.eu/ows/rw/pages/CTM/feesPayment/warning.en.do

“Potentially misleading information/trade mark “registers” of a non-official nature”
An increasing number of OHIM users are receiving unsolicited mail from unofficial registration services asking for money in connection with Community Trade Marks and Registered Community Designs. If you receive a letter or invoice please check carefully what is being offered to you and whether it comes from an official source. If you have any doubt, please check with your legal advisors or contact us at +34 96 513 9100.”

WIPO also has a brief general notice on its website at the following location:
http://www.wipo.int/madrid/en/index.html

“Warning

On several occasions, the attention of the International Bureau has been drawn to the fact that certain organizations are sending letters to the owners of international registrations, inviting them to register their marks in publications which appear to be of an official nature.  The International Bureau warns the owners of international registrations and their agents that such a publication has absolutely no legal effect in regard to the protection of the said marks and is therefore unnecessary.”

NOTES FOR EDITORS

1. The Institute of Trade Mark Attorneys (ITMA) was established in 1934 as the professional body representing those persons qualified to act for the owners of trade mark and allied intellectual property rights (in particular, registered designs) both nationally and internationally. It now represents the vast majority of UK registered trade mark agents and all UK Trade Mark & Design Litigators.

2. Currently ITMA has approximately 500 practising members; it also extends associate membership to professionals in related fields of law and overseas membership to foreign trade mark attorneys. Its total membership (all classes) is about 1600 members, primarily located in the United Kingdom and Europe, but also in more than 50 other countries.

3. ITMA is regularly consulted by UK government and by international bodies when questions affecting trade mark and allied intellectual property rights arise. It has regular meetings with the Intellectual Property Office (IPO), the Community Trade Marks Office (OHIM), the World Intellectual Property Organisation (WIPO) and other sister organisations in Europe and beyond. For more information visit www.itma.org.uk

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