Those scams again: latest news

Today the MARQUES Class 46 weblog posted the most recent update of its little guide to the practice of IP offices regarding the receipt by users of their patent and trade mark systems of apparently official requests for payments.  Portugal is singled out as having an IP office that is really taking the problem seriously and the UK is praised for alerting new trade mark and patent applicants of the risk of receiving these requests at the point at which they apply for their rights.

A big problem is that, in most countries, it is not clear whether there is even anything legally wrong about writing a deceptive letter that appears to be from an official source, asking for payment of a fee.  However, in the United Kingdom at any rate, it appears that there is some good news. Regulation 2(1) of the Business Protection from Misleading Marketing Regulations 2008 has been successfully invoked in a case involving a different scam (the sending out of letters concerning the renewal of non-existent contracts for the repair and maintenance of printers and faxes), London Borough of Croydon v Austin Hogarth [2011] EWHC 1126 (QB), 5 April 2011 (unreported and not available on BAILII -- but the Kat has a copy if you want to see it).  In this case Judge Mackie said:

"26. The position, as I see it, is as follows: First, the Law. The definition of advertisement includes any form of representation which is made in connection with a trade, business, craft or profession in order to promote the supply or transfer of a product. The letters, which are the subject of these complaints, are plainly representations made in connection with a trade or business and it follows that I do not accept that the letters do not amount to advertising. 

27. The next question is whether the advertising is misleading. First, do the letters deceive or are they likely to deceive? In my judgment, the answer is plainly yes. They suggest to a reader that the document is or is likely to be taken as one thing when it is nothing of the kind. 

28. Mr. Hogarth denies that the agreement looks like an invoice. He says it does not. He says it states quite clearly at the top in big letters “Business Equipment Maintenance Agreement”, and that there is no way it can be mistaken for an invoice. He also says that it is misleading to rely upon: “If you would kindly fill in the number of machines on the enclosed document in the space marked with a cross, sign it and return to us within the next 5 days” bearing in mind the sentence before that. He points to other features which he says are likely to indicate that this is nothing more than, what he says it is, an invitation to enter into the contract. The question is whether that is misleading. In my judgment, it plainly is misleading. One must look at this in the context of apparently routine documents received during busy commercial life. The document appears to be one thing and is something quite different. That is an impression formed by the complainants, by the witnesses in this case, by the Advertising Standards Authority and by the OFT. It is not surprising that people have formed that view because, as I see it, it is blindingly obvious to anyone who has had any business experience that, when receiving a document of that kind, you would, unless you have checked it very carefully, take it to be something which it is not. You would sign a new contract thinking you were dealing with an existing company. The structure of the scheme was designed to mislead. There is no genuine commercial reason for the mailing to take the form it did. So, in my judgment, the communication is one that plainly deceives or is likely to deceive" (red bits courtesy of the IPKat).

If this is good news for the United Kingdom, it should also be good news for the whole of the European Union, since these Regulations implement no less a piece of law as Directive 2006/114 of the European Parliament and of the Council concerning misleading and comparative advertising -- which is not only required reading but required law for all 27 countries of the EU.

The IPKat's friend Carlton Daniel (Squire, Sanders & Dempsey (UK) LLP), who kindly supplied him with the information above, adds that, under the Enterprise Act 2002, the Office of Fair Trading (OFT) also has powers to take action with respect to 'community' infringements. Carlton suggests that the OFT's Nina Caplin (lawyer) and Mike Lambourne (policy) may be able to offer some guidance.