While it is not unlawful to charge an exorbitant sum for a relatively simple service, it is unlawful to pass yourself off as the official provider of that service. The Intellectual Property Court was recently faced with a case of just this type in relation to the Intellectual Property Office (“IPO”). Their decision is unlikely to stop the practise altogether but is a welcome step in the right direction.
The defendants, Harri Jonasson, and his company, Intellectual Property Agency Limited (“IPAL”), wrote to various proprietors of patents and trademarks reminding them that the right required renewal and requesting a fee. The minimum fee that IPAL charged for trademark renewals was £1,280 whereas the official fee through the IPO is £200. There were similar mark ups for patent renewals.
The defendants did then try to renew the right although not always successfully as in some cases the right owner had renewed the right already. Through doing this, IPAL made a gross profit of £1.1 million.
The claimants raised an action alleging both passing off and breach of copyright. They raised this against both IPAL and against Harri Jonasson himself, as a joint tortfeasor, and sought an account of profits. The defendants put in an initial defence but did not appear at trial.
To show passing off, the claimants had to show that the IPO had built up goodwill, that there had been a misrepresentation and that this misrepresentation had caused loss.
While normally goodwill is said to be garnered in a party’s business, in this case the IPO does not carry out business. The court found that as professional associations and charities have been entitled to claim goodwill, government departments and executive agencies are similarly entitled.
The misrepresentation was based on the letters sent by the defendants. While finding that the logo used by IPAL “looks nothing like the logo of the IPO” the court found that “What matters is that the logo and overall presentation of the “Reminder” document suggest in my view a form emanating from an official source” even if those very familiar with the IPO would have been unlikely to have been confused. The court also considered evidence of confusion from recipients of the letters and found that a large proportion of the users of IPAL must have confused it for the IPO.
There was no financial loss to the IPO as it was paid the right fees for the rights that they renewed. However, the court found that the IPO had suffered reputational damage.
The court also found in favour of the Claimant in relation to trade mark infringement. This was based on the visual, aural and conceptual similarities between the sign INTELLECTUAL PROPERTY OFFICE and the defendants’ use of the words INTELLECTUAL PROPERTY AGENCY LTD.
Finally, the court found that, as the sole director and shareholder of IPAL and as the registered owner of the website, Mr Jonasson was the “only individual, who took steps to institute IPAL's acts complained of and that he must therefore have intended that those acts would occur.” He was therefore found jointly liable for IPAL's acts of passing off and trade mark infringement.
The Court awarded the claimants £500,000 under the account of profits claim. This is the maximum permitted in the Intellectual Property Enterprise Court