The IPO takes down a scammer; and opens the door to restitution claims by rightsowners
A company calling itself the Intellectual Property Agency Ltd (IPAL) wrote to wrote to holders of patents and trademarks, reminding them that the right required renewal at the UK’s Intellectual Property Office (the IPO), and requesting a fee for the renewal which was considerably greater than the IPO’s.
It’s a pretty common scam. There are warnings against it not only on the website of the IPO, but also on the websites of Irish Patents Office, WIPO, the EU’s OHIM, and the US PTO. Of course, interposing between the IPO and rightsowners, and charging the rightsowners exorbitant fees to renew their patents and trademarks with the IPO, is certainly sharp practice, but it is not necessarily unlawful.
However, the line can be crossed. For example, in the US a criminal case has recently been commenced against the alleged principal in a mass mailing scam targeting holders of US trademarks. Again, in the UK, IPAL went a lot further than many of these scams, misrepresenting that it was the IPO (or, at the very least, officially connected with it). In the Comptroller-General of Patents, Designs and Trade Marks v Intellectual Property Agency Ltd [2015] EWHC 3256 (IPEC) (10 November 2015) (noted here on IPKat), HHJ Hacon held that IPAL had passed itself off as the IPO (the first plaintiff), and that IPAL had infringed trademarks in the IPO held by the Secretary of State for Business, Innovation and Skills (the second plaintiff).…