Trademark Scams: How To Spot And Avoid Them And Protect Your Brand

Trademark scams are on the rise in Canada. The Canadian Intellectual Property Office (CIPO) and the College of Patent Agents and Trademark Agents (CPATA) have warned business owners and trademark owners to be vigilant about phishing attempts by email, phone call or text message from people posing as lawyers. agents or service providers specializing in intellectual property, or even CIPO employees.

These messages often use information from public registries and pressure recipients to act quickly. A wave of this type of scam was reported in 2024 by various publications. As one of our clients has been targeted, we thought it prudent to provide an update on the situation and best practices.

Our observations in the heat of the moment

The recent fraud attempt against our client consisted of an email from a sender posing as an intellectual property lawyer.

The fraudster claimed that a third party, his "client", was about to file a trademark application corresponding to the recipient's trade name. The shipper then urged our client to immediately file a trademark application through him, warning him that if he did not do so, he would be filing a competing application on behalf of his purported client.

The fraudster suggested that since our client had apparently been using his trade name for some time, he was offering him the option to apply first (for a fee, of course). The message was largely based on a sense of urgency to push our client to respond, pay money or communicate information to the sender without taking the time to ensure that it was a legitimate communication.

The email also mentioned the name of a genuine lawyer with a valid licence to practise; However, the telephone number and email address provided did not match the contact information in the public records. By contacting the lawyer in question, we were able to confirm that the message did not come from him, that he was aware of the theft of his identity, and that he had tried in vain to put a stop to the scam.

We knew that a legal expert in good standing would not disclose to a third party his client's trademark registration strategy in a manner that was likely to harm the client's interests. In Ontario, members of the bar are required by their code of conduct to uphold obligations of confidentiality, loyalty and the prevention of conflicts of interest to their clients. In other words, no lawyer would "betray" his client by offering the same services to a competitor.

What would have happened if we hadn't found out?

If this type of scam is not detected in time, the recipient risks being swindled out of money, falsely disclosing sensitive information, or retaining the services of an unwilling scammer. CIPO explains that intellectual property fraud often involves schemes to obtain money or personal data by impersonating a member of a law firm, an agent or an employee of a legitimate government agency.

Red flags to watch out for

There are several signs that you may be dealing with a phishing attempt; Take them seriously.

1. Sense of urgency – Scammers demand an immediate response or payment by making you believe that your trademark registration is about to expire or that your trademark is threatened. The message may ask you to respond immediately, click on a link, make a bank transfer, or send a payment via PayPal or a third-party platform. CIPO considers these to be classic indicators of a scam.
2. Use of real information – Fraudsters often use real information to appear credible. As explained by CPATA, fraudulent messages may contain your name, company name, trademark information, or other information from public registries or CIPO databases.
3. Identity theft – Scammers may pose as a lawyer, trademark agent or government authority that actually exists, but these kinds of attempts do not stand up to scrutiny. For example, the domain names of fraudulent emails were often registered just a few days or weeks before the message was sent. Law firms have a variety of tools to verify the authenticity of the matches they receive, and even their most basic technologies typically allow them to detect an anomaly.
4. Grammar errors – Phishing emails often contain mistakes, have a sloppy layout, and contain inaccuracies regarding the recipient's trademark registration (or lack thereof). A common red flag is the mention of old forms of law names that are no longer used today. Another potential "red flag" is the way the alleged lawyer presents himself in his signature. If they use terms that you find questionable, such as an unusual job title, be vigilant.

What to do if you think about a scam

First, establish the legitimacy of the message, including the legitimacy of its sender. BLG's Trademarks Group has extensive experience in this area; Please do not hesitate to contact us if you need any help with this.

Authentic emails from CIPO staff members end with "@ised-isde.gc.ca". If the sender claims to be a trademark agent, check their record in CPATA's public registry and make sure that the email address you received matches the official contact information listed there. CIPO also recommends confirming that any official correspondence from CIPO is properly listed in the Canadian Trademarks Database or the Trademarks Document Search Service. Otherwise, it could be fraud.

CPATA also suggests checking to see if the sender's contact information is on its list of potentially malicious items to look out for. The agency publishes preventative content about intellectual property scams, including lists of company names, phone numbers, names of registered agents and websites frequently used by fraudsters. If you are unsure about the identity of a shipper, you can visit the CPATA website.

If you are unsure about the legitimacy of a person claiming to be a lawyer, you can verify their identity yourself by consulting the public registry of the law society of the province in which they claim to be registered.

Above all, stay on your guard if the message plays on fear, secrecy or urgency. Be wary of requests for immediate action, threats that someone else will "appropriate" your business name if you don't respond, or messages that appear to be from a genuine professional but prompt you to transact via an unknown email address, phone number, or payment method.

If you are concerned that a communication you have received may be fraudulent, refer to CIPO's IP Scam Awareness Zone page and CPATA's public registry before responding. Suspicious messages can also be reported to CIPO at ic.contact-contact.ic@ised-isde.gc.ca with "IP scam" in the subject line.

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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.