Passing off wins the day: fake Patent Office scammers pay up, promise not to do it again

Passing off, like the horse-
and-buggy, might look quaint
but can get you there in the end

"Intellectual Property Office succeeds in passing off claim" is surely the news story that sets all hearts a-flutter in government patent offices, trade mark registries and intellectual property offices in common law jurisdictions, as the curious remedy of passing off -- which is to the law of unfair competition what the horse-drawn buggy is to the SUV -- notches up another notable triumph. According to this news item, posted on the chunky and unlovable GOV.UK website which is replacing the elegant and sophisticated UK Intellectual Property Office website (among others):

Two of the most blatant offenders – ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’ – and the persons behind these organisations, Mr Aleksandrs Radcuks and Mr Igors Villers, have admitted and settled our claims and agreed to be bound by an Order of the Intellectual Enterprise Court [no, says Merpel, it's the Intellectual Property Enterprise Court, England and Wales. Writing blogposts is an intellectual enterprise though ...] prohibiting them from further acts of passing off.

This means that if these people pass themselves off again as the Intellectual Property Office (IPO), they will be in contempt of court and liable to imprisonment.

Part of the settlement is a substantial payment to the IPO which will cover some of our legal costs. Further proceedings are pending against another organisation that is engaged in similar practices, so watch this space.

Background

On Monday 19 May 2014, we filed a claim for passing off at the Intellectual Property Enterprise Court against the persons behind the companies trading as Patent and Trade Mark Office and Patent and Trade Mark Organisation.

These organisations have been issuing official looking ‘renewal’ notices to holders of UK registered patents and trade marks offering to renew the rights for fees greatly in excess of the official renewal fees. We know that some of our customers have been misled into making excessive payments to these organisations because they thought they were paying the IPO for renewing intellectual property rights.

We therefore felt it was necessary to take appropriate action given the evidence that our customers are being misled or confused and that damage is being caused to the office’s good name.

Happy as he is that this has happened, the IPKat is still concerned about the fate of those people who have been induced to pay these pretend-renewal fees.  In each instance that such a payment is made, it may not be economically feasible for them to commence their own legal action to recover the sums so paid, yet he is uncertain if there is any mechanism by which they can be joined in the UKIPO's action, given that theirs is a claim for money paid on the basis of a fraudulent or at least deceptive representation, while that of the Office is based on passing off.  Do the terms of the settlement require Messrs Radcuks and Villers to disgorge their ill-gotten gains, he wonders, and why is this decision not yet available on the BAILII database of judgments, on the page for IPEC judgments in 2014? Presumably it's because the parties settled everything and there was nothing for the court to give judgment on.