Abusive Payment Requests After Trademark Application or Before Upcoming Renewal

The German Patent and Trademark Office (DPMA) warns:

Numerous companies send fee invoices to patent applicants, design applicants, or trademark applicants disguised as official invoices from DPMA, WIPO, or EUIPO.

In this case, either an entry in an address book or address database is offered, which are largely unknown. Or – especially before the due date of renewal fees – an invoice is sent that often resembles an “official” fee request.

The unsuspecting observer assumes it is an “official” request from the respective office and pays the requested costs. These are often exorbitantly high. For example, for a – not even desired by the applicant – paid publication or registration of intellectual property rights in unofficial registers or for a trademark renewal of a “normal” word mark with up to 3 classes of goods, sometimes far beyond EUR 1,500.00 net is demanded.

The DPMA states in this regard:

“The offers, payment requests or invoices and bank transfer forms of these companies sometimes give the impression of being official forms. However, such letters alone have no legal effect; they do not establish any payment obligation towards the issuer.”

The German Patent and Trademark Office further points out “that effective legal protection can only be obtained by applying for an intellectual property right with the German Patent and Trademark Office or other industrial property protection authorities. Official fees incurred in connection with an intellectual property right in proceedings before the German Patent and Trademark Office are to be paid exclusively to the account specified by the German Patent and Trademark Office.”

If our law firm is commissioned with the application for intellectual property rights, i.e., trademarks, patents, utility models or designs, we point out that only the invoices issued or authorized by us are relevant, as we check all deadlines to improve payment monitoring and inform our clients in good time and, if necessary, pay corresponding advance invoices. If you receive an invoice from another party, we therefore ask you to submit it to us so that we can check its legitimacy.

In a notice, the DPMA particularly warns about the following companies and states that these are not related to any services and tasks of the DPMA:

1. Offer for inclusion in address directories or “registers”:
  • AGN Trademark and Company Publication
  • AGR General Business Data e.K.
  • General Data Register
  • General Business Administration (AGV)
  • CPTD – Central Patent Trademark Database
  • DMPR – German Trademark and Patent Register
  • European Trade marks and Designs
  • FIPTR Federated Institute for Patent Trademark Registry
  • I.B.F.T.P.R. International Bureau for Federated Trademark Patent Register
  • I.B.I.P. International Bureau for Intellectual Property
  • IOPTS International Organization for Patent Trademark Service Corporation Matic-Verlagsgesellschaft mbH
  • MDS Marken Deutschland Servicegesellschaft
  • Register of Commerce – Trademark Register Directory
  • TM-Edition International Catalogue of Trademarks
  • WBIP World Bureau Intellectual Property
  • WIG-Economic Center for Industry and Trade AG
  • WIHH-Economic Institute for Industry, Trade, Craft AG
  • WPTI s.r.o. World Patent and Trademark Index
  • Central Trade Register
  • ZGR Central Office for Commercial Trademark Registrations
  • ZUGV Central Office for Business and Trade Publications
2. Offers in Connection with the Renewal of Intellectual Property Rights

In this context, the DPMA particularly warns against the following companies:

  • Deutsche Markenverlängerung AG
  • DPA Deutsche Finanz Administration GmbH
  • DMV-Deutsche Markenverlängerungs GmbH
  • DPMV-Deutsche Patent- und Markenverlängerung GmbH
  • ECTO SA
  • European Trademark Organisation S.A.
  • Intellectual Property Agency Ltd.
  • Nationales Markenregister AG

Also in connection with intellectual property rights that are registered with the WIPO (World Intellectual Property Organization) in Geneva, warnings are issued about certain providers. WIPO has not released a list. If you receive an invoice even though you have initiated the registration through our law firm or we are named as representatives or authorized recipients, we urgently request that you do not pay the invoice, but submit it to us for review.

You can find the original wording of the DPMA warning here.

WIPO has issued a similar warning with sample PDFs of the “invoices”. You can find this warning here.

A similar warning has also been issued by EUIPO, which applies to EU-wide register applications for trademarks and designs possible at that office.

For further information, we are at your disposal.