Background

While unsolicited or misleading services being offered to intellectual property rights owners have been around for many years now, as with many scams, IP scams are getting more sophisticated and, sometimes, harder to spot.

IP rights owners need to be aware of targeted scams by scammers and unscrupulous organisations. The Intellectual Property Office of New Zealand (IPONZ) has even resorted to adding warning banners to its website after being made aware of businesses receiving unsolicited emails from entities falsely claiming to be law firms or IP attorneys. If you receive an email or letter from an unfamiliar party requesting payment for unsolicited IP services, you should treat it with caution.

What types of IP-related scams are there?

Scams and unsolicited communications are constantly getting more sophisticated and becoming more convincing. In some cases the communications are purported to come from legitimate or currently practising lawyers.   

The scams may take various forms and currently are known to include the following:

• IP database scams: These scams usually involve an entity sending an invoice for publishing IP registrations in a database set up by the sender. Such databases have no value. Details of IP registrations will already be recorded with the relevant official registries.
• Unsolicited IP renewal reminders: These "reminder" letters may misleadingly give the impression that they have been sent by official organisations. They will often offer to renew IP registrations at costs significantly more than reputable IP service providers - and without providing any ongoing services. 
• Domain name squatting: Entities may contact brand owners claiming that another party has applied to register a domain name that incorporates the relevant brand. Sometimes these entities, or someone related to them, may in fact have registered the domain name themselves and will attempt to sell the domain name to the brand owner at an inflated price.
• Trade mark squatting: This involves a party registering a trade mark that rightfully belongs to someone else, typically with the intention of profiting from the rightful owner's brand or reputation. This often occurs in jurisdictions where trade mark registration operates on a "first-to-file" basis, meaning the first person or entity to file for a trademark application gets priority, regardless of prior use or ownership elsewhere. Of particular concern are unsolicited approaches from parties offering to assist with actions against trade mark squatters, where those parties may have a connection with the squatters.
• Unsolicited trade mark registration: These typically involve an entity falsely claiming that another party intends to register your business name as a trade mark and for you to act quickly to “secure your rights” before the supposed filling proceeds. The sender will direct you to complete an application through a non-official website, send fake documents purporting to be from an official registry, or request payment through a non-secure website.

By way of example, IPONZ has issued a media release titled “Warning: Unsolicited emails on IP rights”, reporting that businesses have received unsolicited emails from entities impersonating law firms or intellectual property attorneys, including NRH Legal Services, Ormand Law, and Tasman Law Limited. Similarly, IP Australia’s “Scams related to managing IP rights”, webpage highlights reports of false infringement notices and includes examples of fraudulent websites posing as official international patent and trademark offices, such as “www.ipaustralia.com.au”, which is not affiliated with IP Australia.

Helpfully, both IPONZ and IP Australia provide practical examples of unsolicited email communications, misleading correspondence, and fraudulent attorney websites, illustrating how these scams commonly present in practice.

What should you do if you receive unsolicited correspondence relating to your IP?

Be aware that it could be a scam unless it's from your usual IP provider or (occasionally) an official body such as the Intellectual Property Office of New Zealand or the World Intellectual Property Organization. However, remember that official IP offices always direct correspondence to your agent on record - so if you are receiving correspondence directly, treat it with due levels of caution…

If you are ever unsure you should contact us in the first instance so we can assess its authenticity. However, we understand that it can be very hard to know whether an invoice is legitimate or not and therefore having the right practices in place is essential:

What to look out for:

1. Direct contact: Generally, if you are getting correspondence purporting to be from an IP office, there is a high chance that it is fake. IP offices will generally deal with your agent.
2. Suspicious urgency: Be cautious of claims of urgency. Scammers often require urgent action so that you feel pressured to respond or act quickly without stopping to check the request.
3. Check the details of the organisation: Always check the invoice first to see who it is coming from. Is it an organisation you know or have had contact with? Often, on close review, the ‘organisation’ has an address in an illogical place (for example, a letter purporting to come from the US Patent Office, but with an address in Europe).
4. Unsolicited correspondence: Are the invoices for services that you have requested? Do the associated fees seem reasonable in the circumstances?

What to do: 

1. Pause: Don't engage with the sender if you are unsure about the legitimacy.
2. Check: Let us know if you are at all suspicious. But a bit of self-help can be useful - type that ‘organisation’ name into Google and ask if it is a scam. Others may have reported them already.
3. Don’t pay: Never disclose your credit card or other financial details. 

Further information and examples of misleading invoices can be found on the Intellectual Property Office of New Zealand website. The Consumer Protection website also provides information to help consumers and businesses recognise, avoid and report scams.

Get in touch

Please get in touch with our contacts if you have any questions about this article or IP protection in general.

Special thanks to James Burnett for his assistance in writing this article.