Keywords: China, intellectual property,
trademark, patent, PCT International Patent System, Madrid System,
In addition to domain name and trade mark scams from China,
there are now dishonest solicitations with regard to International
Trademark Registrations under the Madrid System and patents filed
under the PCT International Patent System. Patent and trade mark
owners - beware!
In the past few years, IP scams coming out of China have
expanded from domain names to trade marks. Please see our previous
"Domain Name and Trade Mark Scams in China" published
on 25 March 2011. Recently, inbound scams from overseas to Chinese
entities are discovered.
On 25 August 2011, the Trademark Office in China issued a notice
of caution to alert applicants and their agents who had filed
applications or obtained registrations under the Madrid System for
the International Registration of Marks that they might receive
letters, facsimiles or emails with dishonest and unofficial
solicitation for payment of fees from overseas organisations or
entities who held themselves out to be official or quasi-official
This caution notice advises that the following features are
often found in a dishonest solicitation:
Use of names, abbreviations or signs which are identical or
similar to the World Intellectual Property Organization
("WIPO") or other foreign trademark offices;
Incorporation of the Madrid International Registration Number,
applicant's details, specimen of trade mark and specification
(all being searchable information available online in the
Request for payment of fees to handle registration, renewal or
provide monitoring service;
Request for payment of fees for other purposes.
The WIPO has also issued a similar notice of caution to alert
right owners about scams targeting at patents filed under the PCT
International Patent System. The WIPO's notice reads as
"It has come to the attention of the International Bureau
that PCT applicants and agents are receiving invitations to pay
fees that do not come from the International Bureau of WIPO and are
unrelated to the processing of international applications under the
PCT. Whatever registration services might be offered in such
invitations, they bear no connection to WIPO or to any of its
official publications. The invitations often identify a particular
PCT application by its international publication number (e.g., WO
02 xxxxxx), publication date, title of the invention, international
application number, priority information and IPC symbols."
Trade mark and patent owners should be cautious of suspicious
solicitations. Before responding to any suspicious communications,
we recommend that you should consult or verify with your own IP
agents, the relevant government IP office and/or the WIPO, as the
case may be.
Mayer Brown is a global legal services organization
comprising legal practices that are separate entities (the Mayer
Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a
limited liability partnership established in the United States;
Mayer Brown International LLP, a limited liability partnership
incorporated in England and Wales; Mayer Brown JSM, a Hong Kong
partnership, and its associated entities in Asia; and Tauil &
Chequer Advogados, a Brazilian law partnership with which Mayer
Brown is associated. "Mayer Brown" and the Mayer Brown
logo are the trademarks of the Mayer Brown Practices in their
This article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
intended to provide legal advice. Readers should seek specific
legal advice before taking any action with respect to the matters
discussed herein. Please also read the JSM legal publications
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Lupin Limited is an innovation led transnational pharmaceutical company which develops and offers a wide range of branded & generic formulations, biotechnology products...
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).