Unfortunately, it is increasingly common for trademark applicants in Spain and the European Union to receive, once their trademark has been published (and made visible to everyone) in the Official Industrial Property Gazette or in the European Gazette, one or more notifications sent by post and/or email that look like invoices, from institutions that, despite their names and acronyms, are not official.
We have copied a example recently submitted by a client, from a Hungarian company called WOTRA KFt. (World Organization for Trademarks), which, given the name of the company and the appearance of the communication, could easily be mistaken for an invoice sent by an official body. In this communication, the company requests no less than €986 from our client:
However, if we read the (very) small print carefully, we can see that the company states, in very poor Spanish, that the service provided has no connection with publication in official registers, that the communication does not constitute an invoice, and that the applicant is under no obligation to pay, even though the appearance of the letter could clearly mislead or confuse the applicant.
The Spanish Patent and Trademark Office (OEPM) has already warned about these fraudulent practices on numerous occasions through various channels. One example can be found in this link from their website.
The OEPM is also very active on social media, raising awareness among trademark applicants about these types of practices. Recently posted on Twitter Another example of communication received by email, in this case relating to a domain name registration:
Likewise, according to the OEPM itself in this link, the European Union Intellectual Property Office (EUIPO) has already taken legal action against companies engaged in this type of practice in Spain, as well as in Sweden, where the courts have handed down four prison sentences to those responsible. According to the information provided in this link, the World Intellectual Property Organization (WIPO) also initiated legal proceedings against a company based in the Czech Republic, called WIPD, whose resolution has resulted in a fine of 1 million Czech korunas for the offender and a one-year prison sentence.
At this link The EUIPO also provides a list of some of the main companies that send this type of misleading communications, which is expanded upon by the Official Association of Industrial Property Agents (COAPI) in this other link. In this link, COAPI reminds users which are the only official bodies with jurisdiction in Spain that have the authority to process trademark applications: the Spanish Patent and Trademark Office for Spanish national brands; the EUIPO, for European brands; and the WIPO, for international brands in accordance with Madrid Union.
At Bamboo, we recommend that all legal services and procedures related to industrial property or intellectual property, concerning the registration of trademarks, patents, industrial designs, or works protected by copyright, be entrusted to professionals in the field, who can advise you on your case and warn you of these fraudulent payment requests at any time. At Bamboo, we are lawyers specializing in intellectual and industrial property, and we will be able to help you.
