Stopping the Trademark Trolls

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Proceed with CautionIn the past few months, a number of Duncan Craig LLP clients have contacted us with concerns about registration and renewal forms they have received regarding their trademarks. While scams involving trademark renewals are not new, they do seem to be on the increase.  Here is some information on how the scams work and how to spot illegitimate notices.  If in doubt, please contact us for an assessment of the material you have received.

Trademark Renewal Scams

Registered trademarks in Canada are valid for 15 years. You cannot renew a trademark until you or your designated agent receives a renewal notice from CIPO.  In renewal scams, the perpetrators take advantage of publicly available information about trademarks and count on the trademark owner losing track of when they need to renew.  The scammers typically send a letter or email to the trademark owner saying that the trademark is about to expire and that there is fee to renew that far exceeds the $200-$350 charged by the Canadian Intellectual Property Office (CIPO).   These notices are made to resemble notices from CIPO and contain dire warnings about trademarks being cancelled unless action is taken.

CIPO is the only organization that can communicate with you about your trademark renewals. If you are concerned about the legitimacy of any communication, the first thing to do is to check from where the communication came.   Legitimate notices will come from the CIPO email address with the @canada.ca domain or be mailed to you from:

50 Victoria St
Gatineau, QC
K1A 0C9

If you have registered your trademark, CIPO will communicate with your agent directly about the renewal. No other parties will receive any communication from CIPO regarding your trademarks.

The second step is to check when your trademark needs to be renewed. If the deadline is still years away then the communication is not legitimate.  If you are still concerned, you should contact us or CIPO.  If you are unsure when your trademark’s 15 years are up, you or we can search the CIPO database to find the original registration date.

Trademark Application Scams

When you apply for a trademark, CIPO will review the application and, if there are no concerns, will publish details of the application in the Trade-marks Journal. If no opposition has been received within 60 days of publication, then the trademark applicant can apply to register the trademark.

Scam #1

When the application is published in the Trade-marks Journal the scammers will contact the applicant saying they will complete the registration process for them for a fee, often in the range of $1500. In Canada, the only person who can register a trademark is the person who made the initial application or a designated agent.  Agents designated to act on your behalf must be Canadian.  Offers from foreign entities are not legitimate.  If nobody opposes the trademark application process the final step to complete the registration is simple and straightforward and can typically be finished in under an hour.

Scam #2

When the trademark application is published, the applicant will receive a letter or email from a foreign country saying they can register their trademark in that country with no additional paperwork required – just a large fee. The notices come with a warning that failure to pay will result in the applicant losing the right to apply in that country.   Just about every country has the same application process as we have in Canada.  There is no easy or paperless way to get around the application process.

Scam #3

When the application is advertised in the Trade-marks Journal it opens the door for companies to aggressively go after any potential trademark that bears any resemblance to their own. The opposition to the application is usually accompanied by a request for a monetary payout in exchange for not opposing the application. While not a scam per se, applicants should be aware that there is the danger that they may be targeted even if there is no solid ground for the opposition.  Any opposition will inevitably delay the trademark application process and add to the costs.

If you have any concerns about your trademark renewals or applications, please contact us for an assessment of the notices you have received. You can also contact CIPO directly to get an assessment and report any scams.

Ross Swanson

This article is intended to give general information only. We recommend you contact a lawyer for specific legal advice.