Your brand, their game: The trademark scam doing the rounds

Over the last few months, a number of our clients have received ‘urgent final notices’ advising them to immediately apply for a trademark or risk losing their branding rights.

These letters often appear to come from the ‘Patents Registry Hub’ or more recently ‘Marks Filer AU’. They purport to be legitimate Australian trademark attorney services. The Subject line typically reads: ‘Trademark Infringement Protect Your Business Name’.

The notices share a similar narrative:

• The sender is a trademark attorney service;
• They say they have been approached by another business seeking to register a trademark;
• During their “due diligence”, they discovered that the trademark in question is central to your brand and your business;
• They warn that, if this other business succeeds, that other business could force you to rebrand;
• As a solution, they urge you to therefore instruct them immediately to apply for a trademark to protect your existing branding, on your behalf.

These notices involve some research and commonly reference a brand that is in fact central to your business. Interestingly enough, they also commonly list a known and reputable trademark attorney as the sender of the notice.

Here is how to spot the scam:

• First, Australia is a ‘first to use’ jurisdiction, meaning that if you are the first user of a trademark in Australia, you will have priority over someone who later applies for the same trademark. The threat of having to rebrand set out in their letter does a great job of creating urgency but is not right.
• Second, it would be unethical, and a breach of professional duty, for a trademark attorney to contact you in this way if they’re acting for someone else. That is, you would have a right to feel aggrieved if you engaged with a trademark attorney who, instead of filing a trademark for you as you instructed, wrote to someone else and applied for the trademark on behalf of that other person.
• Third, if you look up the trademark attorney listed as the sender, you’ll usually find they work for a completely different firm, unconnected to the letter.

So, if you receive a letter which fits that description, it is most likely a scam that you can ignore. There is no urgency to respond or necessarily to apply for a trademark as they propose.

That said, if there is a silver lining, these notices have prompted many businesses to reflect on their brand strategy and what they need to do to best protect their brands from competitors.

If your brand is central to your business, now may be a good time to consider whether trademark protection is right for you.

Rhys Munzel is Partner with FAL Lawyers.