Would you pay ten times the price of a cup of coffee just for a third party to collect it for you?
Many Australian small business owners are targeted by unofficial third party organisations when it’s time to renew their trade mark. We often see people being charged hundreds, even thousands of dollars more than our fees. While this activity is predominantly seen in trade marks, it does also happen to patent and design owners.
As each financial year comes to an end, we receive an increased number of reports of unofficial invoicing from Australian trademark owners regarding trade mark renewals which are not due for several years. Occurrences of this nature have increased over time since COVID-19 spread to Australia. The companies that send out these invoices access trade mark owner’s details by trawling through information which we need to publish to comply with our governing legislation. The companies sending these invoices are not associated with IP Australia or with any other government agency. You are not obligated to pay them to use our services.
Check the source before you pay
It’s easy to mistake an unofficial invoice for a real one. A few simple steps will mean you don’t pay more than you have to.
Companies that issue these invoices are often named in a way that sounds official, but simple research can reveal they are not. To stay on the right side of the law, these companies often hide the truth in the fine print, using phrases like ‘this renewal is optional and only acts as a reminder’ and ‘we would like to inform you that we are not IP Australia, and this is not a bill’.
You should be wary of any trademark invoice that demands payment of heavily inflated prices for a trade mark renewal. Your trade mark renewal invoice should only come from IP Australia or your trusted attorney or accountant.
These unofficial trademark invoices might suggest they can protect your trademark via placement on an international trade mark register. These registers have no official or legal standing to protect your product. If you are interested in protecting your brand internationally, you can find out more in our international trade mark content.
Before you pay any invoices you should check:
- if the invoice is from IP Australia or your trusted attorney or accountant. Here is an example of a renewal notice from IP Australia.
- the real cost for your trade mark renewal. Be sure that any service fee above our renewal fees is going to offer you value for money.
- the list below of companies that are known to send unofficial invoices
- examples of unofficial invoices below
- contact us to confirm your invoice is official
Protect your trade mark and your business
Don’t wait until your business is targeted. Register for online services to be kept informed about your trade mark. Our online services portal is also the quickest, safest and cheapest way to renew your trade mark.
Get in touch with us if you receive an unofficial invoice to renew your trade mark from an unknown third party.
We know these companies often change their names, so we constantly update the list of companies that engage in unofficial invoicing. Reporting the invoice will help us keep the information we have about these companies up to date.
Reporting is easy, simply contact us online here or send your correspondence to PO Box 200 WODEN ACT 2606.
Where to get help
If you’ve paid for a service that you didn’t receive, we encourage you to report it with the following organisations that can help warn other Australian businesses:
- Australian Competition and Consumer Commission (ACCC)
- Australian Securities and Investments Commission (ASIC)
- the Department of Fair Trading in your home state.
The ACCC has regular alerts on their SCAMwatch website to help you recognise, avoid and report unofficial invoices. It also provides guidance on how to protect yourself from unsolicited invoices and where to get help if you do receive one.
This example was sent offering to renew our own trade mark registration. The fee for allowing this organisation to act on our behalf ($1485 for the first class and $650 for each additional class) is a significant mark-up over and above the actual renewal fee.
In the next example this organisation requests a fee to include a trade mark on their database. As stated in their terms and conditions, this is an elective service for a privately-run database that is no substitute for actual registration of your trade mark with IP Australia or in any overseas jurisdiction.
Other unsolicited invoice examples our customers have received
- IPS Intellectual Property Services
- Patent & Trademark Office Pty Ltd
- TM Edition
- IPT Patents
- FOIP - Federated Organization for Intellectual Property
- UPTS - Universal Patents and Trademarks Service
- Trademark and Patent Publications
- WORTA - World Organization for Trademarks
- International Patent & Trademark Agency
Some of the companies known to send Unofficial trade mark invoices
- Commercial Centre for Industry and Trade (Switzerland)
- Company for Economic Publications Ltd (Austria)
- Company for Publications and Information Anstalt (Liechtenstein)
- Edition The Marks KFT (Hungary)
- European Institute for Economy and Commerce (Belgium)
- Federated Institute for Patent and Trademark Registry (USA)
- Globus Edition SL (Spain)
- INFOCOM (Switzerland)
- Institute of Commerce, Trade and Commerce (Switzerland)
- International Patent and Trademark Agency (Czech Republic)
- International Patent and Trademark Register (Germany)
- IP Data s.r.o (Czech Republic)
- IT & TAG (Switzerland)
- Objective Concept (France)
- Patent & Trademark Office Pty Ltd (Melbourne, Vic., Australia)
- Patent & Trademark Organisation LLC (based in the USA with a street address in Melbourne)
- Register of International Patents and Trademarks TM Collection (Hungary)
- TM-Edition Ltd. (Hungary)
- TM Worldwide (Hungary)
- Trade Mark Publishers (based in Austria with a street address in Sydney)
- Trademark & Patent Publications (based in Poland with a street address in Sydney)
- UPTS s.r.o (Czech Republic)
- World Patents Trademarks WIPT s.r.o (Czech Republic)
- ZDR-Datenregister GmbH (Germany)
- Trademark Renewal Service
- IP Office
- Intellectual Property Services
- Goldman Rosenstain & Partners
Please note this list is not exhaustive. Unsolicited invoices may come from companies that are not on this list.
The World Intellectual Property Organization also provides a list of companies requesting payment from applicants and agents applying under the Patent Cooperation Treaty (PCT). The services for which these companies demand payment are not mandatory and are unrelated to the official processing of PCT applications.
Unnecessary overseas legal services
You may receive correspondence from an overseas lawyer or attorney firm informing you that someone has applied to register your trade mark in another country. In this correspondence, they may offer their services if you decide to oppose that registration.
This may be a legitimate service but may only be relevant if you intend to use your trade mark in that particular country. If you don’t want to use your trade mark in that country, then you need to decide if such a service will give you value for money