While scams and frauds targeting trademark holders have been
around for years, we have recently noticed an increasing frequency
and sophistication in their appearance and approach.
Generally, a firm that has made an application to IP Australia
for trade mark protection on an applicant's behalf will be
listed as the Address for Service for any official correspondence
concerning that trade mark. The application will also list the
trade mark owners address. The Australian Trade Mark Office makes
this information available to the public domain via IP
Australia's Australian Trade Mark On-line Search System
(ATMOSS). This publicly accessible information becomes the target
of many of these scams.
Although most official communication we receive at Surry
Partners comes from IP Australia, we have become increasingly aware
of clients receiving unsolicited invoices urging them to pay a fee
for the publication of a trade mark in a
A client recently received an invoice from "TM-Edition
– International Catalogue of Trademarks", a company
based in Hungary. The invoice included a reproduction of the trade
mark we had recently obtained registration for on behalf of the
client and a request of payment for "registration costs"
of AUD $1,850. The invoice looked like this:
A closer look at the "invoice" reveals that the only
services gained by paying the invoice is for the trade mark to be
published as a "listing in the TM-Edition" and to receive
a "complimentary copy of the publication". Undeniably
this service offers no practical benefit to the trade mark owner,
and could only be an unofficial list that the sender has or may
Typically this type of correspondence is sent from organisations
based in Eastern Europe with names that are similar to genuine
intellectual property organisations. IP Australia and the World
Intellectual Property Office (WIPO) both publish a frequently
updated list of these organisations on their website (see
If you receive any similar communication from an unfamiliar
organisation in relation to your trade mark it should be ignored
and the invoices should not be paid.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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