Owners of Canadian trade-marks are being targeted in a series of
frauds and scams that, in various iterations, have been around for
many years but which appear to have recently re-surfaced with a
Canadian trade-mark owners are being sent correspondence from
what appear to be governmental organizations. The correspondence
typically shows the trade-mark and correctly identifies the
application or registration number. The recipient of the letter is
urged to pay a fee by an upcoming deadline. The deadline ostensibly
relates to either "publication" of the trade-mark or the
renewal of a registration that is indicated to be near expiry. The
correspondence is sent directly to the trade-mark owner and is not
sent to the trade-mark owner's agent of record or
representative for service.
These solicitations are almost always scams. In Canada, there is
no government fee for advertisement or publication of a trade-mark
Also in Canada, correspondence from the Canadian Intellectual
Property Office (CIPO) is always sent to the agent of
record/representative for service of the trade-mark owner and is
only, in certain limited circumstances, also sent directly to the
Canadian trade-mark registrations are currently in force for 15
years after registration and can be renewed for successive 15-year
periods. CIPO does not accept renewals of Canadian trade-mark
registrations more than six months before they are due for renewal.
In many cases, the fraudulent correspondence is sent to the
trade-mark owner many years before a registration is due for
renewal, with the implicit or explicit incorrect suggestion that
the registration is due for renewal and the fee must be paid
imminently in order to renew the registration. This correspondence
typically contains false information about the renewal date and
also quotes an outrageously high fee to attend to the renewal.
The information about the trade-mark and trade-mark owners'
contact particulars is easily obtained by the scammers from
CIPO's online database. The scammers appear to operate in the
hope that some businesses will pay such official-looking invoices
without first checking with their colleagues responsible for
trade-marks or with outside trade-mark counsel.
Generally, these solicitations can safely be ignored and the
invoices should not be paid. If there is any doubt about any such
unsolicited communication relating to Canadian trade-marks,
trade-mark owners are advised to check with their Canadian
Trade-mark owners may also be targeted in various deceptive
marketing practices related to domain names. One such practice is
where a domain name registrar or one of its agents solicits the
customers of a competitor by way of a communication that looks like
a renewal or expiration notice and attempts to confuse the
registrant into switching registrars.
Another more prevalent practice is a communication from a domain
name registrar to a trade-mark owner falsely suggesting that
another party is seeking to register a domain name comprising the
owner's trade-mark. The communication encourages the trade-mark
owner to register the domain name before the other party has a
chance to complete the process. Often, the communication offers
related services to the trade-mark owner, such as keyword services.
If confronted with such a communication, a trade-mark owner should
check with its IT department or domain name service provider to
determine if the domain name in question is available for
registration and may consider registering it directly instead of
responding to the communication.
The Canadian Trade Commissioner Service has issued a notice
about such practices as they relate to domain name registrars
located in China. A copy of the notice can be found here, but such services are not limited to
China-based businesses. In all such cases, the watchword for
trade-mark owners is to be cautious and, if in doubt, to check with
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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