Patent scammers hit Bay companies

David Macaskill

Bay of Plenty businesses have been warned to be on the lookout for a scam that has cost some companies thousands of dollars in fees for deceptively worded invoices claiming to offer international patent and trademark protection.

"I could give you a dozen examples in the past month alone," said David Macaskill, a lawyer with intellectual property (IP) firm James & Wells. "I had one client that paid 2500 [$4000], but so far there have only been two I'm aware of that have paid."

However, Mr Macaskill noted that he couldn't quantify how many companies had been affected because many arranged their own IP and trademark registrations.

A typical demand was received by John Miller, founder of Tauranga's Foot Mechanics podiatry chain, who received two authentic-looking invoices in the mail from a company going under the name Trademark Selection in Zurich, Switzerland, and Trademark Selection in Florida, US.

Each invoice asked for 1185 for the registration of Foot Mechanics' two key trademarks, payable to a Bank of America account in Florida.

"They were very similar in format to the usual invoice and the way they lay out these kinds of documents," said Mr Miller. However, as his company's trademarks were already registered in Europe and in the United Kingdom by James & Wells, he immediately forwarded the invoices to his lawyers, who told him the demands were a scam.

"They look very official and a lot of people just look at the introductory line and pay the bill," said Mr Macaskill.

All trademarks and patents were territorial, meaning companies must apply for protection and registration in every country in which they were operating, he said.

Because most countries maintained an online register of patents and trademarks, there were companies that regularly trawled the public data and sent warning notices asking for money. Many of the companies used wording stating they were just offering to publish IP details in their own publications, in order to get around fraud allegations, he said.

The Trademark Selection website, www.tm-selection.com, states its main business activity is to publish an "annual unofficial, yet international catalogue of registered trademarks". However, the invoices are intended to mislead companies. One example supplied to the Bay of Plenty Times, from a Czech Republic-based company headlined its demand "Registration of Your International Patent Application".

Mr Macaskill said he had seen seven or eight companies sending out the demands.

"The same company names come up repeatedly and they are often registered in Eastern European countries, where it is going to be difficult to get the money back."