2019.01

Beware of Trademark Scam Notices

By: Derwin Wong

It must be that time of year again.  Recently, a client of ours received what appeared to be an official looking notice from a government authority requesting payment for their registered trademark.  It turns out, however, that the notice was nothing more than an attempt to scam our client into payment of an amount that really would have no effect on its trademark registration.

Please click here to see a redacted version of the notice below and it follows the usual pattern that these types of scam notices follow:

  1. To create a sense of urgency, the notice indicates that it is an “Important Notification” regarding the trademark registration. In other cases the notice may say that the registration is about to expire and ask the owner to renew the registration or pay fees.
  2. To look official and legitimate, the notice incorporates information from public records including the registered mark, its graphic representation if it is a design mark, its registration number as well as its registration date and filing date.All of this information is publicly available from the Trademark Database of the Canadian Intellectual Property Office (CIPO).
  3. Although missing in this case, some notices even include "Canada" or "Canadian" in the company name and letterhead or a restatement of the goods and services associated with the registration, making them appear official.
  4. The notice states that upon payment of $815, the information regarding the registration will be “published for a term of two years” on their “Trademark Database Register” – although the notice does not explain what benefit such publication will have for the owner.This is typical of these types of notices to offer to add the owner to directories which appear official, or offer services similar to those already provided by CIPO.
  5. A quick Google search of the address of the sender of these notices will usually indicate a strip-plaza or other commercial/industrial property as in this case, or of the telephone number area code being in an odd jurisdiction like the Province of Saskatchewan in this case.

Valid and legitimate notices about Canadian trademark registrations will only come from CIPO, 50 Victoria St., Gatineau, QC, K1A 0C9 or an email with the "@canada.ca" domain name.  Notices about international applications under the Madrid Protocol would come from the World Intellectual Property Office address or from the domain "@wipo.int".  Copies of all notices will also usually be sent to us if we are your trademark agent.

If you're suspicious of something you received related to a fee payment, service offer, renewal/maintenance fee, or similar requests regarding your trademark registration, bring it to our attention immediately. It is likely an attempt to defraud you.

For more information contact Derwin Wong by phone at (416) 368-0600 or by email at dwong@businesslawyers.com.

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