The Madrid Protocol international filing system has been welcomed with open arms by Applicants residing, domiciled or having a business in its member countries. The Madrid Protocol simplifies the process of filing trademarks in various countries, having benefits such as a single filing procedure and fee for registration in any or all of its member countries (more than 80 countries to date), and does away with the requirement for lengthy translations of documents. This in turn makes such applications cost-efficient. Applicants are also able to file such applications directly with the World Intellectual Property Office (WIPO) themselves. All these perks have resulted in Madrid Protocol applications quickly rising in popularity with businessmen around the globe compared to conventional individual country registrations.
However, being a relatively new and unexplored area to many businessmen, the Madrid Protocol system also provides the perfect opportunity for scammers to prey on unsuspecting Applicants. The number of scams conning Applicants out of substantial amounts of money is increasing at an alarming rate, and many have fallen victim to them.
We have observed that most scammers sending unsolicited letters do so once an application has been accepted for registration by the WIPO. Such letters – often official- and legal-sounding letters seeming to originate from or relate to the WIPO – are sent within days or weeks of the application being submitted for registration. The letters invite Applicants to pay a substantial registration fee in order to enable their applications to be registered. Such letters are usually accompanied by accurate details of the Applicant and trademark, and unsurprisingly, seem very convincing. However, what many Applicants do not know is that these details can be easily obtained via the online databases of most Intellectual Property Offices.
The WIPO has since published warnings regarding such scammers on its website (http://www.wipo.int/pct/en/warning/pct_warning.htm). This webpage also shows examples of the many types of unsolicited letters, created by third parties with various official-sounding names, currently being used to con Applicants out of their money. From here, it can also be seen that scammers not only resort to Madrid Protocol scams, but PCT scams for patent applications as well.
Here’s a handy tip for Applicants when it comes to registration via the Madrid Protocol: In the interests of convenience, there are no official fees payable to WIPO for the registration of the international registration, for a smooth registration with no objections or complications. Additional fees may only be payable to WIPO in the event that there are other issues such as assignment or transfers, changes in name and/or address of the Applicant, recordal of licences and etc, and of course, there may be extra fees incurred in any of the designated countries in the event of objections or oppositions, and so forth.
On the whole, Applicants should be extra cautious when receiving external correspondence or letters seeking payment or information from third parties. Applicants who engage IP firms as agents should only receive correspondence from their respective agents, and for Applicants who file Madrid Protocol applications without the aid of agents, it is advisable to seek professional advice and assistance when in receipt of official letters requesting for payment of fees, in order to ensure that they are really paying towards the protection of their mark, and not handing over money to a scammer!
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