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Intellectual Property Office Stamps on Over-Charging Agent

Confusing trade names and impressive-looking logos are often deployed to dupe the unwary. However, in one case, a company which posed as having a connection to the Intellectual Property Office (IPO), and profited handsomely by charging outrageous fees for patent renewals, was hit hard in the pocket by a judge.

The IPO charges £200 to renew a patent but the company’s minimum fee for acting as an agent came to almost £1,300. More than 900 clients fell for the ruse and the company made profits of over £1.1 million. Although it had grossly overcharged its clients for doing something which they could have done themselves, at much lower cost, there was nothing inherently unlawful in its business model.

In those circumstances, the IPO argued that the company’s activities amounted to passing off and trade mark infringement. It was submitted that the company’s name and logo – which featured an image of the scales of justice – were deliberately designed to confuse clients into believing that the company and the IPO were one and the same or that there was a close connection between them.

In upholding the IPO’s claim, the Intellectual Property Enterprise Court (IPEC) found that the company had made misrepresentations to its clients and that many of them had been taken in. The obvious visual, aural and conceptual similarities between the company’s name and that of the IPO infringed the latter’s trade mark.

Although the IPO had suffered no financial loss due to the company’s activities, it had endured reputational damage. In those circumstances, the company was ordered to pay £500,000 of its profits to the IPO, the maximum award permitted under IPEC rules. The same order was made against the company’s sole director.