Australia – the latest target for unsolicited offers of IP services

On 27th July 2009, IP Australia's website (www.ipaustralia.gov.au) issued the following statement:

“IP Australia has recently received numerous calls from trademark owners who have received an invoice from a company known as TMP, Trademark Publisher. The invoice includes a Sydney street address for TMP and requests payment for publication of the trademark owner’s trade mark details in a register. This company is not associated with IP Australia and has no official or government authority. The service they offer does not affect official trademark registration or trade mark rights in Australia or, to the best of our knowledge, any other country. Before paying a fee for any IP related service, please be sure to check the bona fides of the service provider to avoid being deceived.”

TMP began forwarding unsolicited correspondence to trademark proprietors with Australian addresses in late July 2009. This organisation is registered in Austria but has an Australian address in Kent Street, Sydney for receiving payment.

TMP offers proprietors the opportunity to have their trademark particulars published in the TMP Info Register for a period of three years.

Information published in the register at www.trademarkpublisher.info/main/search.php?lang=en is limited to:

• the name and address of the proprietor
• a representation of the trademark as registered
• the number allocated to the trademark by IP Australia
• the date of registration and the class or classes in which the trademark has been registered

Importantly, the register entry provides no indication (other than the class or classes) of the nature and scope of the goods or services in respect of which the trademark has been registered.

A thorough consideration of the correspondence from TMP (particularly the fine print) makes it clear that the TMP Info Register is a private register, and publication therein does not replace a registration with IP Australia or extend the expiry date of the registration. However, the nature of the correspondence from TMP is clearly designed to imply that it is an invoice.

A review of the TMP Register in late July 2009 revealed in excess of 13,000 entries for trademarks registered in Austria, the Czech Republic, Finland, France, Hungary, Italy, the Netherlands, Norway, Poland, Portugal, Russia, Slovakia, Switzerland and Turkey.

As of 28th July 2009, the TMP Register listed no Australian trademark registrations.

Notwithstanding warnings published by IP Australia, the Western Australian Department of Commerce (www.commerce.wa.gov.au) and many  Australian IPpractitioners, at the date of writing this article there were 820 entries from Australia on the TMP Register.

At a publication cost of A$1,450 to Australian proprietors, this means that TMP has received A$1.2 million in fees in less than six weeks.

For many years Australian IP providers have been aware of their clients receiving unsolicited correspondence forwarded to their clients. This correspondence has offered various IP-related services, including:

• publication in electronic data files
• listings in trademark registers
• electronic trademark monitoring services

As with the current correspondence being sent out by TMP, these offers have been in the form of an invoice, often employing language, document layout and design, and logos or other representations easily confused with official documentation issued by trademark offices around the world.

Although the latest developments relate to TMP and to trademark proprietors, patentees, owners of registered design rights and, more recently, domain name proprietors are also being similarly targeted.

Notwithstanding warnings from bodies such as the International Trademark Association, the American Intellectual Property Law Association, the World Intellectual Property Organization and the national patent and trademark offices of many countries, unsolicited correspondence offering services of no, or doubtful value to proprietors of IP rights continue to flourish.

In late July 2009, the TMP Register listed in excess of 13,000 entries. At the current publication fee of A$1,450 to Australian proprietors, this would represent fees of A$19 million (approximately US$16 million or €11million) paid globally to TMP by trademark proprietors .

Whilst it is accepted that lower, or discounted fees may have applied when the TMP Register was established (allegedly in 2002), whatever the actual fees received by TMP, they are a significant and unwarranted impost on trademark proprietors globally.

The total annual cost to owners of IP rights worldwide is impossible to estimate because of the large and increasing number of parties involved in soliciting payment for IP services of no or limited value. It will, however, run into millions of dollars (or euros) annually – money which could be better used to research new products or designs and develop new trademarks and markets.

The extent of such unsolicited correspondence has been recognised by Wikipedia, which has a reference to “Scams in intellectual property” (http://en.wikipedia.org/wiki/Scams_in_intellectual_property).

In conclusion: caveat emptor.