Yesterday, Class 46 posted this item about Willem Leppink attending the first meeting of the newly-formed Anti-Fraud Network on behalf of MARQUES -- an organisation that has done much work on behalf of trade mark owners and other IP right holders who receive apparently official demands for the payment of money relating to the maintenance of their IP rights, among other things. Willem has just left this meeting. This is what he has to say:

I have just presented at the first meeting of the Anti-Fraud Network (SFN) in my capacity as member of the MARQUES executive committee and chair of our MARQUES Anti-Fraud Task Force.

MARQUES has received -- and still receives on a regular basis -- many complaints about scam invoicing (and similar communications) from IP owners and their representatives. Trade mark owners are either misled (and sometimes pay) or are very irritated because of the questions they get about these activities from within their organizations. Representatives of trade mark owners are also frustrated because of their clients being misled and frustrated.

Scam invoicing in the IP area fits into broader practice of aggressive directory company sales practices. These scams often take advantage of lack of IP expertise by entrepreneurs and employees in companies and the fear of missing a deadline. Often names, acronyms, logos or addresses similar to those of real public IP offices are used. What's more, advantage is taken from the split roles in companies between the decision makers and the people in charge of approving and making the payments

The main scams are

• registrations and listing of the trade marks in often non-existing or non-relevant directories and
• renewal scams, where trade mark renewals are offered for very high prices by parties that suggest that they are an official body or IP office.

Scams lead to frustrations amongst our members. The fraud has been on MARQUES’s agenda for any years and we have a good communication line with OHIM with regard to the efforts to fight these scam. We also have an Anti-Fraud Taskforce consisting of several senior MARQUES people.

At the AFN meeting we discussed various possibilities and a possible Anti-Fraud Charter to reflect cooperation between inter alia OHIM, WIPO, EPO, national offices, Europol and User Associations, naturally including MARQUES.

Some of the issues which MARQUES has raised with OHIM in the past relate to creating technical obstacles for fraudsters to be involved in data harvesting. Possible criminal action has also been discussed.

MARQUES has said that it supports OHIM’s plan to create a central publicly available repository of examples of fraud and that all members of the AFN can refer to it, e.g. by including a link on their websites. MARQUES has also advocated that trade mark agents and law firms use standardized information sheets and links to this repository.

Fact-finding and analysis of the modus operandi of the fraudsters is of key importance. In the EU it is still difficult to take civil action against fraudsters since, while their nvoices are misleading. they may yet include legally accurate information and waterproof disclaimers.

One of the new points of view that MARQUES has brought forward is that the victims of these fraudsters can not often rely on the protection granted by the EU Unfair Commercial Practices (UCP) Directive. The good news, however, is that currently, in the EU, there are discussions about changing the directive on business-to-business (B2B) misleading advertising. In relation to that there has been a Communication of the European Commission (COM (2012) 702 Final) re protection of business against misleading practices and revision of Directive 2006/114 (B2B); followed by opinion of the European Economic and Social Committee (EESC ) (2013/C 271/11 (see OJ 19.9.2103, C 271/61)

What we know is that there will also be a blacklist similar to the UCP Directive, but its contents are not yet known  

In MARQUES’s view, trade mark scams could be included in s blacklist, comparable to that of the Blacklist of the UCP Directive for B2C communications): in such a list, Commercial practices which are in all circumstances considered unfair are the inclusion in marketing material of an invoice or similar document seeking payment which gives the consumer the impression that he has already ordered the marketed product when he has not.