International Intellectual Property scams

There are two prevailing scams that are reaching New Zealand based trade mark owners on a regular basis.

Invitations to register domain names

A number of our clients have forwarded to us an email from an alleged domain registrar that claims to have received applications, from a third party, for domains names including the recipient company’s trade mark or New Zealand registered domain name. These emails often include a long list of domain names that this third party has sought to register. There is an element of urgency to the communication prompting the recipient to reply within a short time frame to secure those domains.

Domain names are registered on a “first-come, first serve” basis. Thus there is no obligation on Registrars to alert the supposed true owner of the trade mark that has been incorporated into the domain name.

In reviewing such letters we refer to the WHOIS database and usually find that there is in fact no application for registration of the listed domain names.

In such a case, it is clear that the sender is not an accredited Registrar and he/she is attempting to create an urgent situation where the target is lured into registering new, and often unnecessary, domain names.

If you consider that registration of any of the domain names is appropriate rather than responding to the email seek registration through a trusted Registrar.

International publication of your European trade mark

Shortly after filing an application to register a Community Trade Mark in the European Union, the application often receives directly from a European based publication company an invoice for publication of the registration. These invoices are for hundreds of Euros. Examples of these kinds of letters can be seen here.

The Trade Marks and Designs Registration office of the European Union is not in the practice of writing to applicants directly. If you receive correspondence, particularly correspondence requesting payment, check the authenticity of the source and if still in doubt refer it to your patent attorney.

Elena Szentivanyi – October 2010