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Canadian trade-mark owners: beware of recent frauds and scams

Gary Daniel and Antonio Turco

Owners of Canadian trade-marks are being targeted in a series of frauds and scams that, in various iterations, have been around for many years but which appear to have recently re-surfaced with a vengeance.

Canadian trade-mark owners are being sent correspondence from what appear to be governmental organizations. The correspondence typically shows the trade-mark and correctly identifies the application or registration number. The recipient of the letter is urged to pay a fee by an upcoming deadline. The deadline ostensibly relates to either “publication” of the trade-mark or the renewal of a registration that is indicated to be near expiry. The correspondence is sent directly to the trade-mark owner and is not sent to the trade-mark owner’s agent of record or representative for service.

These solicitations are almost always scams. In Canada, there is no government fee for advertisement or publication of a trade-mark application.

Also in Canada, correspondence from the Canadian Intellectual Property Office (CIPO) is always sent to the agent of record/representative for service of the trade-mark owner and is only, in certain limited circumstances, also sent directly to the trade-mark owner.

Canadian trade-mark registrations are currently in force for 15 years after registration and can be renewed for successive 15-year periods. CIPO does not accept renewals of Canadian trade-mark registrations more than six months before they are due for renewal. In many cases, the fraudulent correspondence is sent to the trade-mark owner many years before a registration is due for renewal, with the implicit or explicit incorrect suggestion that the registration is due for renewal and the fee must be paid imminently in order to renew the registration. This correspondence typically contains false information about the renewal date and also quotes an outrageously high fee to attend to the renewal.

The information about the trade-mark and trade-mark owners’ contact particulars is easily obtained by the scammers from CIPO’s online database. The scammers appear to operate in the hope that some businesses will pay such official-looking invoices without first checking with their colleagues responsible for trade-marks or with outside trade-mark counsel.

Generally, these solicitations can safely be ignored and the invoices should not be paid. If there is any doubt about any such unsolicited communication relating to Canadian trade-marks, trade-mark owners are advised to check with their Canadian trade-mark advisers.

Trade-mark owners may also be targeted in various deceptive marketing practices related to domain names. One such practice is where a domain name registrar or one of its agents solicits the customers of a competitor by way of a communication that looks like a renewal or expiration notice and attempts to confuse the registrant into switching registrars.

Another more prevalent practice is a communication from a domain name registrar to a trade-mark owner falsely suggesting that another party is seeking to register a domain name comprising the owner’s trade-mark. The communication encourages the trade-mark owner to register the domain name before the other party has a chance to complete the process. Often, the communication offers related services to the trade-mark owner, such as keyword services. If confronted with such a communication, a trade-mark owner should check with its IT department or domain name service provider to determine if the domain name in question is available for registration and may consider registering it directly instead of responding to the communication.

The Canadian Trade Commissioner Service has issued a notice about such practices as they relate to domain name registrars located in China. A copy of the notice can be found here, but such services are not limited to China-based businesses. In all such cases, the watchword for trade-mark owners is to be cautious and, if in doubt, to check with trade-mark counsel.

Republished with permission from Blake, Cassels & Graydon LLP

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