Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
Misleading and fraudulent invoices are a continuing problem in the world of intellectual property. Applicants and proprietors are repeatedly approached by companies sending unsolicited invitations offering unnecessary and expensive services.
A company trading as “Intellectual Property Agency Ltd” (IPA) regularly sent out letters to proprietors reminding them to pay a patent or trade mark renewal fee, and requested payment for the renewal, typically charging proprietors up to six times the official renewal fee. This in itself is not unlawful since IPA did actually proceed with paying a renewal fee at the UK IPO when instructed and paid by the proprietor.
The UK IPO, however, took issue with the official looking nature of the reminders sent by IPA, giving proprietors the impression that IPA were a part of, or connected to, the UK IPO. Proceedings for trade mark infringement and passing off were brought against IPA and its director Mr Harri Mattias Jonasson.
Both IPA and Mr Jonasson were found to have deliberately set out to deceive proprietors into thinking that their letters and invoices were issued by the UK IPO, and were jointly liable for trademark infringement and passing off. IPA and Mr Jonasson were ordered to pay £500,000 plus legal costs, the maximum penalty permitted under the Intellectual Property Enterprise Court.
IP Minister Baroness Neville-Rolfe welcomed the decision and the stiff sanctions, saying “Deliberately misleading consumers into thinking they are engaging with an official government agency, is a very serious matter”.
If you are concerned that you may have received a fraudulent invoice or letter, or if you need advice on any other aspect of intellectual property, you can contact one of our highly qualified advisors who will be able to assist you.