We would like to point the Readers’ attention to the phenomenon of “unofficial” trade mark registers. For some time, there have been entities that deliver, both to persons and companies registering trade marks, requests for payment on account of implementing trade marks in their registers.
This practice is not only employed in relation to the Polish registers – similar letters are the bane of anyone who registers community trade marks with the Office for Harmonization in the Internal Market. What’s more, this does not concern only databases of trade marks – similar notices are sent also by unofficial registers. For example, letters addressed to entrepreneurs registered in CEIDG or the National Court Register (“KRS”) are a common occurrence.
We strongly advise not to comply with such notices and recommend to disregard them. Failure to pay after receiving such letter will have no influence whatsoever on obtaining protection for the trade mark or on the registration of the company in the KRS. Such letters imitate official documents, but as a matter of fact constitute commercial offers by companies that do not have to be complied with. In this post we will attempt to explain the differences between such false noticeand the official, authentic letter from the Office.
What does a false notice look like?
Such notices are cleverly prepared – at first glance they just look like official documents:
- they frequently come from entities having official-sounding business names – e.g. Register of National Trade Marks and Utility Models (pol. Rejestr Krajowych Znaków Towarowych i Wzorów Użytkowych), and a logo reminiscent of governmental bodies
- feature true and correct data regarding the application, e.g. its number and trade mark reproduction
- are written in official language and invoke a serious-looking (at least at first glance) legal basis
- feature a demand for payment for implementing the trade mark in the register or extending its protection period, which de facto constitutes a commercial offer.
Below, we will take a look at a few examples of such letters. More of them may be found on websites of the Patent Office and the Office for Harmonization in the Internal Market warning about the actions of such exotic registers.
How not to get scammed?
How to distinguish a false notice from a real one? First, attention should be paid to the sender. Such requests are not sent by the Patent Office, but from various companies that often have official-sounding business names, e.g.: Rejestr Krajowych Znaków Towarowych i Wzorów Użytkowych Sp. z o.o. (English: National Registry of Trade Marks and Utility Models), Administracja Znaków Towarowych i Wzorów Użytkowych Sp. z o.o. (English: Administration of Trade Marks and Utility Models). The situation is similar in the case of community trade marks – names and graphic symbols of unofficial registers try to evoke an impression of being official, e.g. Community Trade Mark Filing Service.
It is worth remembering, as far as community trade marks are concerned, the Office does not send invoices or letters that would directly require any sort of payment (and in the case of the Polish Patent Office – letters come directly from the Office, never from intermediaries).
Currently, authentic letters from the Patent Office look as follows:
Another characteristic element of false notices is the peculiar language in which they’re written. A popular measure consists in using seriously-sounding references to provisions of law, because in such a case a letter automatically seems more “official”. Let’s take a look at the following example:
An entry in the Register of Polish Commercial Entities, pursuant to Article 66(1) of the Act (Journal of Laws of 1994, no. 16, item 93), is subject to a fee in the amount of PLN 120.00
And what is Article 66(1)? A provision from the Civil Code dealing with an offer (”A declaration made to another party of the intent to execute a contract is deemed an offer if it lays down the key provisions of the contract”) under which – to put it simply – a contract is concluded.
One should remember that the use of such registers is purely voluntary – there are no governmental bodies or courts backing them. The notice constitutes a peculiar commercial offer that may or may not be accepted by the other party. By the way, such letters usually contain well-hidden information that the payment is voluntary, most often in small print or written in such language that it is impossible to notice this at first glance. You may find, for example, the following formula:
Registering the trade mark in the Register of National Trade Marks and Utility Models is irrelevant for the creation and the legal protection of the trade mark and decisions in the public register and is conducted for the period of 10 years.
Why are such tricks used in the letters? The answer can be found in the construction of the penal provision regarding fraud:
Art. 286 § 1. Whoever, with the purpose of gaining a material benefit, causes another person to disadvantageously dispose of their own or someone else’s property by misleading them, or by taking advantage of a mistake or inability to adequately understand the action undertaken shall be subject to the penalty of deprivation of liberty for a term of between 6 months and 8 years.
To avoid being charged with fraud, such letters contain well-hidden information that the payment is voluntary (and therefore – at least in theory – no one is misled). In many events, this may not be enough because when assessing whether someone was misled we should consider all circumstances of the case.
Of course, in the future the described above examples or practices of entities sending notices may take a different direction. In this post, we wanted, in particular, to raise the subject and emphasize the need to employ care when making all register-related payments. All unusual letters, especially those that demand payment, should be the object of careful scrutiny.
As we all know, human creativity is boundless – we can see this every day when we watch new films, advertisements and read books. Unfortunately, creativity is sometimes displayed in sophisticated ways of earning money at the expense of someone’s unawareness. For this reason, we have taken a closer look at the phenomenon of “false” or ”unofficial” registers and we recommend anyone to exercise care in their relations with such entities.