Unsolicited Mail? The Good, the Bad, and the Ugly (but not technically illegal)

The public trade mark register can be a wonderful thing.  For economic historians it might be considered a monument to the C19th invention and codification of intangible property rights.  For commercial players it's an invaluable resource for identifying and managing risks – as well as keeping a weather eye on your competitors' activities.  For eagle-eyed brand enthusiasts and journalists, it can provide the first glimpses of a hot company's forward plans.

However, for some bottom-feeding fish of the IP ecosystem, it serves a more banal purpose:  it offers a conveniently organized, publicly accessible and moderately up to date mailing list.  For as long as I have been in the profession, clients have received unnecessary, spurious and in some cases outright fraudulent correspondence from these 'businesses' with dismal regularity.  Recently, there has been another surge of such activity with a significant number of businesses receiving correspondence in the last few weeks.

It is a truism of any active trade mark portfolio that deadlines proliferate vigorously and that Byzantine and time-sensitive official fee structures can easily conspire to kill off rights, whether they be 'old oaks' or juveniles still in the application phase.  The most basic requirement of a good quality trade mark service provider is that they must monitor and manage these processes so that their clients are informed and their interests protected.  Occasionally, there is no option but to nag your client relentlessly on the most boring of administrative matters.  "It's like pulling teeth," as my former boss used to say, but it's got to be done.  Our own practice aims to minimize such nagging by bundling key administrative processes, such as renewals, into a single procedure that is as administratively digestible as possible – pulling all the teeth at once, as it were.

The inevitability of administrative demands on clients combines with the ready accessibility of public trade mark data to create a very fertile opportunity for certain 'businesses'.  Given that we are seeing an uptick in these activities, I thought it would be useful to recap some of the 'offerings' put forward.

The 'private' register

An apparent 'invoice' for registration on a seemingly 'official' register is sent to the applicant of a recent trade mark application.  The correspondence is prepared to look as much like an invoice as possible and often features a quasi-official letterhead such as "The Trade Mark Register Service" or similar.  The risk is that a business receiving such correspondence, and knowing that it has recently filed a trade mark application, will simply process the 'invoice' and pay it.  There is a particular vulnerability where supplier invoices may be processed in the business via a different channel from those who carried out, or instructed, the trade mark application.  When Sylvain in accounts calls Mei in the GC's office and says "I've got an invoice here to do with trade marks?", she is liable to clear it as legit.  In reality, the correspondence is nothing to do with the pending trade mark application process.  The small print reveals that "this is not an invoice" – instead it is an offer to enter the same trade mark on a 'private' trade mark register that grants no meaningful legal rights.  By paying the invoice, you accept the service offering, even though it is not a service that the business needs or wants.  Whether or not such correspondence is technically legal, depends on how clear it is that the correspondence is a marketing communication rather than a genuine invoice.

Extending your rights

The mechanism outlined above is a long-standing tactic which, thankfully, seems to be in decline in recent years as applicants have become more aware.  The UKIPO and other legitimate registries have also had some success at shutting down a few of these operations.  However, a more subtle approach involves offers of a genuine service which actually has some value.  In this instance, the applicant of a recent UK trade mark, for example, receives unsolicited mail encouraging them to pay a fee in order to secure an equivalent European Union Trade Mark registration, for example, in addition to their UK application.  Again, the correspondence may be framed in such a way that it is possible to accept the offer simply by paying the money.  At that point, the business may indeed file the EUTM on your behalf and legitimately claim to have delivered the service.  Is this illegitimate?  Again, the technical legality of the approach will depend on how clearly the correspondence identifies its true nature as an unsolicited marketing communication.  Either way, it is clearly inappropriate and undesirable for these businesses to bounce an applicant into spending money on additional rights which they may well not need.  Where the applicant is already represented, such an approach by a regulated IP professional would also be in clear breach of our professional conduct obligations.

Upcoming renewals

The final variation on this theme that I wanted to mention is the variation which has seen a significant upsurge in recent weeks.  We all know that registered trade marks require renewal every ten years.  Most businesses are, rightly, extremely grateful if their advisers flag up an upcoming renewal which might otherwise be missed, resulting in losing the associated right.  The approach that we and others have been seeing recently is where an unsolicited business writes to the owner of a registered mark to inform them of the renewal of the trade mark and encourages them to respond with renewal instructions and payment.  On the face of it, providing that the registered owner is unrepresented, this tactic could be construed as a fair, albeit aggressive, marketing approach.  However, what pushes the conduct over the line, and makes the tactic at the least unprofessional in my view, is that this approach is often made well-before the relevant renewal date. 

Most professionals and in house teams managing trade mark portfolios are likely to start lining up renewal instructions perhaps six months ahead of time.  These businesses make the approach significantly earlier and flag up the start of the renewal window, i.e. six months ahead of expiry, as though it were an upcoming deadline.  It is easy for a recipient to mistakenly believe that the matter needs to be dealt with ahead of that date.  The fees proposed for renewal, in the cases we have seen recently, were also approximately three times what we would charge clients for the same work (after adjusting for official fees and VAT).  Clearly the senders of such letters are not expecting to entice new customers by offering better pricing.  The intention must surely be that rights owners, who may be familiar in general terms with the admin of trade mark matters but are used to skipping the detail, will simply tick the form and send it back with little thought and a cheque enclosed.

But what can you do?

Some of the above approaches are illegal, others might be unethical, unprofessional or at the very least unseemly, contributing to the growth of aggressive direct marketing practices and the erosion of trust in the IP professions by businesses.  There are other variations and no doubt more will be created over time.  In particular, the rise of automation makes it very easy for such a businesses to effectively automate the entire process: scraping data from the public register, sending out automated letters, gathering the money received and – in some cases – disappearing into the night when the IP offices try to clamp down. 

Brand owners must be aware of these practices in order to ensure that they are spending money wisely and only where they expect to do so.  If correspondence of uncertain provenance arrives on your desk, ping it on to your established IP advisor who can confirm whether any action is required.  We don't charge for dealing with such queries and I would have thought our approach will be shared by most other reputable firms.  If you see something you like in one of these letters, perhaps a particularly competitive renewal fee, then by all means look into it.  Meet the business, benchmark it against your existing advisors and a couple of comparators and make an informed decision as to who you will instruct to take matters forward.  However, please don't let your dismay at the arrival of yet another piece of trade mark admin, and the false comfort of habit, lure you into sending it down to accounts for payment without further thought.