WARNING: POTENTIAL SCAM
We want to use this week’s article to warn members of a potential scam.
BCMK Law
We have recently been contacted by a number of motor dealers who have received an email from a company named BCMK Law regarding a potential trademark dispute.
In the correspondence, BCMK Law states that it is ‘reaching out’ to the member regarding the application for legal protection of the member’s brand name. They then go on to state that an applicant is seeking exclusive rights over the use of the member’s name, but does not state who the applicant is.
BCMK Law then notes that the member does not have a registered trademark, and offers to discuss further how the member can obtain protection.
In a follow up email, BCMK Law then sends a note intimating that if the member does not respond to them within 48 to 72 hours, then the member will lose the right to use their trading name.
We have investigated this correspondence on behalf of a number of members, and have to date found no evidence of a trademark application with the Intellectual Property Office or advertised within the Trademark Journal. Whilst the solicitor identified as the author within the correspondence is registered with the Solicitors Regulation Authority and the Law Society, they do not appear to be employed by BCMK Law or to practise Intellectual Property law.
As a regulated solicitor, the author has significant concerns regarding this correspondence and the approach taken by BCMK Law. Whilst the author of the letter is clearly identified as a solicitor, they do not practice the area of law concerned and are not registered with the professional bodies as working for or with BCMK Law. Furthermore, the precise nature of BCMK Law, its qualifications to act and/or the body by which it is regulated to practice law, is not clearly stated. This is a requirement of any corporate body regulated to practice as a Solicitor, Barrister, or Legal Clerk.
IP Register UK
Similar to the above, we have recently been contacted by a number of motor dealers who have received an email from a company named IP Register UK regarding a potential trademark dispute.
IP Register UK also state that it is ‘reaching out’ to the member regarding the application for legal protection of the member’s brand name. They then go on to state that an applicant is seeking exclusive rights over the use of the member’s name, but does not state who the applicant is.
As with BCMK law we have found no evidence of an actual application being made. As IP Register UK do not quote a solicitor in the correspondence we cannot check their qualifications. However, the website address quoted within the signature is blocked and the telephone number included is a VoIP number associated with Intellectual Property scams.
In Conclusion
To be clear, even should you have no trademark registered, where you have a sufficiently distinctive trading name, and can establish a history of trading such that you have developed a level of goodwill, then you will be protected from someone else trading with your name.
Where an application for a trademark is made, this will not prevent you from trading with that name. You will have two months from when the application is advertised to object to it. Furthermore, even where a trademark is registered, this can be challenged at any time with the Intellectual Property Office in a cost-effective manner.
This is not as time sensitive as ANY emails suggest, so do not panic or act rashly.
If members are concerned, there are a number of steps that can be taken to assess the accuracy of this correspondence and to decide how to proceed.
- Members can check the Intellectual Property Office for any current applications for a trademark at https://www.gov.uk/search-for-trademark
- Members can check for any advertised trademark applications at https://www.ipo.gov.uk/t-tmj.htm
- Members can approach an independent specialist in intellectual property.
- The Law Society of England and Wales provides a list of all solicitors registered to practise in at https://solicitors.lawsociety.org.uk/
- The Law Society of Scotland provides a list of all solicitors registered to practise in at https://www.lawscot.org.uk/find-a-solicitor/
- The Law Society of Northern Ireland provides a list of all solicitors registered to practise in at https://lawsoc-ni.org/using-a-solicitor/find-a-solicitor
We have sufficient concerns to advise members not to interact with BCMK Law or IP Register UK or to rely upon this correspondence to be factually correct. There are a number of factors that suggest that this is at best an aggressive marketing tactic, and at worse a scam designed to deliberately mislead.
As always, this advice is general in nature and will need to be tailored to any one particular situation. As a MILS member you have access to the MILS Legal advice line, as well as a number of industry experts for your assistance. Should you find yourself in the situation above, contact us at any stage for advice and assistance as appropriate.
