Trade Mark Trickery: Fraudulent demands from a fake IP firm

Our intellectual property (IP) team has been noticing a recent surge in sophisticated scams within the IP space using fraudulent emails purporting to be from legitimate IP firms – even using names of real Australian IP practitioners.

This alert highlights key warning signs and suggests some protective measures to help businesses avoid falling victim to these fraudulent schemes.

What is the scam?

It is relatively common for our clients to see cold emails from IP firms, both in Australia and from overseas, offering IP services. For example, emails from firms offering to assist with prosecution of foreign trade mark applications, or to renew existing trade mark registrations, or to provide similar services. Your IP lawyers will probably already have warned you about these.

Recently however, an advanced scamming scheme has emerged whereby scammers are emailing businesses and either impersonating government departments or registries (IP Australia, auDA, ACCC or the US Patent and Trademark Office) or real IP practitioners, and using official-sounding legal language to establish credibility to deceive recipients.

We have seen a few variations of this scam – in one example, the scammer claims that they are an IP practitioner who had been approached by a third party to file a trade mark application, for their client’s trade mark. It then urges the target to file a trade mark application urgently, or else they will file the third party’s trade mark application instead. If the email was genuine, this type of conduct would be a flagrant breach of any lawyer’s or patent attorney’s professional and ethical obligations.

IP Australia and the Trans-Tasman IP Attorneys Board have also highlighted this growing trend of trademark infringement scams and urged businesses to remain cautious and vigilant.[1]

Recognising the red flags

To avoid falling victim to these scams, we urge you to:

• Contact your trusted IP advisor before taking any action.
• Be sceptical of any urgent demands requiring you to take immediate action.
• Independently verify any unsolicited emails by looking up the organisation, law firm and solicitor/attorney online. If they are real, you should contact them using publicly listed contact information, if necessary.
• Do not respond to unsolicited communications or pay unsolicited invoices unless independently verified.
• Check with an official source, such as the Trans-Tasman IP Attorneys Regulation Directory to confirm the legitimacy of an attorney. Because some emails use the name of an actual practitioner as the sender, take care to find out if the named sender is a real person, and if they are, where they actually work. If there is a mismatch, the email is probably a fake.

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Authored by:
Antoine Pace, Partner
Rachael Lopez, Senior Associate
Maria Wu, Seasonal Clerk

[1] Scams related to managing IP Rights | IP Australia