European Union: An End In Sight To Misleading Renewal Notices?

Last Updated: 21 June 2016
Article by Mark Owen

Unofficial trade mark and patent renewal notices are a problem. As night follows day, the grant or expiry of an EU or UK trade mark will be followed by the registrant receiving unsolicited communications inviting them to pay for high-priced or unnecessary registration, recordal or renewal services. A mini-industry now exists to send out official-looking communications which only the sharp-eyed will spot have been sent by an organisation that has nothing to do with the relevant Registry. However, is this activity illegal? The senders tend to be careful to include information which a careful reading would show indicates that they are not official and so, they would argue, have not misled anyone. But in a case recently brought in the Intellectual Property Enterprise Court, one of these firms has met its match in the form of the UK Intellectual Property Office ("UKIPO").

The case in question was brought against "Intellectual Property Agency Ltd" ("IPAL") based in the Seychelles and its Swedish owner. The Defendants did not appear. The figures involved are striking. The judge held that on the nearly 1,000 applications by IPAL to the IPO to renew rights, IPAL made a gross profit of at least £1.1 million, having quoted fees much higher than the official fees. This of itself was not illegal. However, if the agency had made a misrepresentation then that could amount to passing-off. There was also an allegation of trade mark infringement based on the UKIPO's logo mark (below right).


Although the claimant was a government agency, the judge held that it had protectable goodwill which was associated in the public mind with "Intellectual Property Office". Was there a misrepresentation? The documents sent looked official and were headed "Reminder". Although IPAL's full name was stated there was also an official looking logo. The judge concluded that the overall presentation suggested a form "emanating from an official source". While IP professionals may not be confused, "others with lives not largely taken up with IP matters might well think that the form comes from the government organisation responsible for IP, the precise name of which they may not have in mind". There was also evidence that some recipients have been confused. The judge concluded that a large proportion of the fees had been paid due to confusion.

There was no damage to the UKIPO in the conventional passing off sense, because it received the renewal fees it was due. Instead, it argued that its reputation has been damaged and that users would feel that it should have known this sort of activity was going on and should have done something about it. The judge accepted that passing-off had long been held to take place in such circumstances.

Trade Mark Infringement

The main debate on trade mark infringement was whether the words in the UKIPO's trade mark "Intellectual Property Office" were confusingly similar with "Intellectual Property Agency Ltd". In making the comparison, the judge felt that the visual, aural and conceptual similarities were obvious. He ignored the non-word element of the UKIPO's registered trade mark since the words were most important to its conceptual meaning and held that the only differences were too slight to avoid the likelihood of confusion. Some UK government branches are referred to as "agencies" (for example the Environment Agency) and the presence of the word "Ltd" at the end would not necessarily be noticed or appreciated by readers. He therefore held there was trade mark infringement under Section 10(2) of The Trade Marks Act 1994, because the mark and sign were similar and there was a likelihood of confusion.

Joint Liability

Mr Jonasson was the sole director and shareholder and the registered owner of the website. The judge held him jointly liable with the company for both passing-off and trade mark infringement because he had actively cooperated to bring about the infringements.


In what is an unusual case, the main remedy sought was neither an injunction nor damages but an account of the defendant's joint profits. The Judge held that an account of profits should be granted. However, the limit for such remedy in the IPEC is only £500,000, and so the Defendants made a profit of some £600,000. As it is, it must be doubtful that the UKIPO will ever be able to enforce the account of profits ordered against a company based in the Seychelles.

A lasting solution?

While it is commendable that the UKIPO took action against one of these organisations and succeeded, this will not bring the practice to an end. Trade mark, design right and patent applicants and owners need to remain vigilant for notices which come other than from their usual agent, and check with them before paying any of these invoices. It is also worth sending copies to the UKIPO, as they continue to monitor the practice and may be persuaded to take action again.

The Comptroller–General of Patents, Designs and Trade Marks and BIS v: Intellectual Property Agency Ltd and Harri Jonasson [2015] EWHC 3256 (IPEC)

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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