Who: The Intellectual Property Office
Where: The Intellectual Property Enterprise Court
When: 19 August 2014
Law stated as at: 9 September 2014
What happened:
The guardian of the UK’s intellectual property rights, the Intellectual Property Office (“IPO”) has recently taken action to protect its own IP. Passing-off proceedings were brought in the Intellectual Property Enterprise Court against two organisations offering renewal services to holders of UK registered patents and trademarks. The IPO reported in a press release that these organisations had adopted branding which misled its customers to believe that the renewal notices were from an official IP body, and had been sending official-looking “renewal” notices to individuals whose IP was up for renewal, presumably having obtained the relevant information from the public register.
Having launched proceedings in May 2014, the case against “two of the most blatant offenders” appears to have been settled around August 19 2014. No judgment has been reported. The two individuals behind the organisations were named by the IPO as Mr Aleksandrs Radcuks and Mr Igors Villers. Radcuks and Villers had been running organisations representing themselves to IP holders as “Patent and Trademark Office” and “Patent and Trademark Organisation”. These two organisations were apparently charging fees for renewals far in excess of the official fee for renewing the same IP directly on the IPO website.
The IPO reports that the settlement consists not only of an admission of culpability and a “substantial payment” to the IPO, but that the two defendants and their organisations have agreed to be bound by a court order to desist from further acts of passing off. The effect of this is that should Radcuks and Villers do so again, they will be in contempt of court, which is a criminal offence punishable by imprisonment. The IPO apparently has another set of proceedings lined up against a third organisation engaged in similar activities.
Passing off: a quick reminder
Although the defendants chose to settle in this case, had they not done so the IPO would have had to make its case using the ‘Jif Lemon’ test for passing off (from Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341). The Jif Lemon test is as follows:
1. there must be goodwill or reputation attached to the relevant goods or services supplied under the branding or get up of the claimant which the passing off proceedings are intended to police.
2. the defendant must have made a misrepresentation to the public (whether or not intentionally) which led or was likely to lead the public to believe that the goods or services offered by him were the goods or services of the claimant; and
3. the misrepresentation must have resulted in damage to the claimants.
Applying the above test to the reported facts of the case, it is perhaps unsurprising that a settlement was forthcoming. Even had the defendants not made an admission of passing off, it seems likely that the IPO would have had little difficulty establishing goodwill and reputation attached to the service it provided under the relevant get up, that the names/get up of the defendants were likely to lead to confusion as to whether they were associated with the IPO or actual or likely damage to the IPO from Radcuks’ and Villers’ activities.
Why this matters:
This case comes as a reminder that the open nature of many IP registries makes them a target for unscrupulous companies. Businesses and other IP holders should therefore treat unexpected invoices purporting to be related to renewals of trademarks, patents or other IP with caution, and, if necessary, take advice before paying. The IPO has guidance on this topic here, the OHIM’s guidance is here and the World Intellectual Property Organisation (WIPO) has guidance and a list with examples of such invoices here.
On the other hand, any third party companies offering genuine assistance with IP renewals must make crystal clear to their customers that the service being provided is an additional service and not the official channel. Failure to do so could potentially lead to passing off claims (as here), complaints to the Advertising Standards Authority under the CAP Code or court proceedings under consumer law (businesses should remember that from October 2014 consumers have a direct right of action in respect of certain unfair practices under the Consumer (Protection from Unfair Trading) Regulations 2008. In extreme cases, criminal prosecutions for fraud may also be a possibility.
