Trade Marks - Don't Get Scammed

Mirai Legal is aware of trade mark scam emails, which have been in active circulation since at least December 2024.

The scam emails:

• impersonate legitimate trade mark attorneys or trade mark lawyers;
• include false or misleading information about Australian trade mark law.
• falsely claim that a third party has instructed the scammer to apply for trade mark registration of the recipient's business name;
• suggest that the third party will apply for a trade mark for the recipient's business name within 24 hours;
• claim that the alleged third party is a startup, but their "research" has identified the recipient as the established user of the trade mark;
• offer services to the recipient to help protect their trade mark rights;
• claim that their "company policy" is to give the recipient the opportunity to apply for the trade mark;
• invite the recipient to call the scammer to prevent the threatened third-party application from occurring;

Fake firm names, domain names & contact details used by the scammers in the emails include the following:

Note: It is expected that the scam will frequently migrate to other domain names and trading identities as service providers respond to shut down existing fraudulent domain names.

Our Trade Mark Scams photo album on Facebook contains more examples.

Such emails should be treated with extreme caution. If in doubt, please Contact Us or IP Australia for further information or assistance.

These scams commonly target businesses which have publicly available email addresses. The target businesses might not necessarily have applied for or own trade mark rights.

A common example of this type of scam is as follows:

• The scammer may claim to be a legitimate trade mark attorney, lawyer, or agent and will often use a professional-looking logo, letterhead/signature and firm name — some scammers are known to impersonate legitimate IP attorneys
• The scammer claims that a third party has contacted them with instructions to register a trade mark that is identical to the recipient's business name.
• The scammer gives some information about the trade mark process — note: such information may be incomplete or inaccurate, and might not represent the correct position under Australian law.
• The scammer states they are contacting the recipient after "conducting research" or "due diligence", which identified the recipient as the rightful owner of the proposed trade mark.
• The scammer offers the recipient the chance to thwart the third party's attempt by registering the trade mark themselves through the scammer. Typically, this proposal is offered on an urgent basis - with the recipient encouraged to make contact within the next 24-48 hours.
• Contact details are provided to do so, usually including a phone number and/or email address.

It is always important to verify the legitimacy of such proposals before responding or engaging.

Under ethical rules, lawyers and trade mark attorneys cannot breach their duties of confidentiality to their clients. This includes breaching confidentiality by contacting a business that might have rights to a trade mark they are instructed to file on behalf of their client, or discussing their client's instructions with an unrealted third party without the client's permission.

Should you receive such a proposal, we strongly recommend that you Contact Us or IP Australia for further advice.

These scams are usually sent by mail, and are sent directly to the recorded owner’s or applicant's address, bypassing the official address for service.

It is common for these scams to use an official-sounding name and for the correspondence to resemble an Invoice or request for payment.

Common examples of these types of scam include the following:

• Offers to publish, register, advertise your trade mark application in a publication;
• Offers to "renew" your trade mark registration (Note: these are often sent a long time before the official renewal due date — always check the official renewal due date before renewing. Do not rely upon the date quoted in the correspondence as this may be inaccurate or misleading. Under Australian law, a trade mark cannot be renewed more than 12 months before the official renewal due date.);

Any of the following factors may indicate a possible scam:

• you receive an unsolicited offer to ‘publish’, ‘advertise’ or ‘register’ your trade mark in a foreign or international publication;
• you receive an unsolicited offer to ‘renew’ your trade mark registration (often more than 12 months before your trade mark is actually due for renewal);
• you receive a request for payment from an unknown source - especially if it comes from an overseas address;
• the correspondence has been sent directly to your address, when your address is not the formal address for service;
• the correspondence requests payment in a currency other than Australian dollars (eg Euros) and the amount appears to be significantly inflated;
• the correspondence relates to an Australian trade mark and has not been sent by IP Australia or your trade mark adviser;
• the correspondence looks like an invoice or has ‘fine print’ - check the reverse side for double-sided printing.

IP Australia has collated a list and several examples of unsolicited correspondence.

If you receive a suspicious or unexpected communication about a trade mark or other intellectual property right:

• Verify the communication is legitimate before responding or making any payments;
• If in doubt: check with IP Australia, contact your trusted trade mark adviser or lawyer, or alternatively contact us.
• Consider reporting the communication to Scamwatch.gov.au.

Before engaging a professional IP firm, lawyer or attorney, it is prudent to confirm their registration with the relevant State/Territory Law Society, Law Association or Law Institute.

• Queensland lawyers are registered with the Queensland Law Society.
• Trade marks and patent attorneys are registered with the Trans-Tasman Intellectual Property Attorneys Board.

If you think that you have been scammed, you can:

• Immediately contact your bank or financial institution (who may be able to stop or reverse payments made)
• Report the scam to ScamWatch.gov.au
• Seek support from IDCare (for identity theft incidents) or the Australian Cyber Security Centre (ACSC) (for cybersecurity incidents)
• Report the scam to IP Australia (if the scam involves impersonation of IP Australia or another government agency)