Canadians trademark owners are being targeted with misleading fee and renewal notices. As discussed previously, this is not a new phenomenon, but is one we are seeing with increasing incidence. These seemingly official invoices have caused some to pay exorbitant fees to private companies in the mistaken belief that they are paying fees required by the Canadian Intellectual Property Office (CIPO).
CIPO has stated that they are aware of fraudulent notices being sent to brand owners by mail or email. The notices appear legitimate and closely resemble official notices as prepared by CIPO. Unscrupulous notices are prepared and sent by private companies that are not associated with CIPO, WIPO or the United States Patent and Trademark Office (USPTO). These companies have made a business out of sending unsolicited invoices by choosing names that are vaguely similar to legitimate government offices. Usually, the solicitations notify trademark owners of an upcoming filing deadline, and include an offer of services requiring fees. Of great concern, the notices are an attempt to trick trademark owners into paying excessive renewal fees. The issue is not limited to Canada; the World Intellectual Property Organization (WIPO) has also placed similar warnings on their website to beware of scams.
Scam notice features
According to CIPO, the scam notices have some or all of the following features:
- The fees in the notice will usually be higher than those required by CIPO;
- The notice states that your trademark protection is about to expire and will ask you to renew registrations or pay fees;
- In order to make the notices seem legitimate, the companies will include data points from public records available on CIPO's database;
- The notice usually includes urgent language such as "patent cancellation notice" or "important notification regarding your federal trademark;" and/or
- The companies that send the notices will sometimes also include "Canada" or "Canadian" in their company name or letterhead to appear more official. Legitimate notices about Canadian patents or trademarks nearing expiry will only be sent from CIPO. Mail notices from CIPO will come from the following address: 50 Victoria St., Gatineau, QC, K1A 0C9 and emails will have the "@canada.ca" domain name.
For more information, below is a list of websites that have circulated warnings about such solicitations:
- The United States Patent and Trademarks Office;
- The Canadian Intellectual Property Office; and
- The World Intellectual Property Office.
It is important to read the fine print of these solicitations to determine whether or not it comes from a legitimate source. Better yet, check with your trademark agent before paying any fees associated with your Canadian trademark registrations.
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