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A Comparison of Turkish And American Perspectives About Fraud Committed By A Person Pretending To Act As A Trademark Attorney (Inspired by the District Court Decision – United States v. Suhorukovs)

Trademark or patent attorneyship is one of the mostly preferred groups of profession in Turkey in the recent years. Although there are around 1200 trademark and patent attorneys registered in and thus authorized by the Attorney Register of Turkish Patent and Trademark Office according to the figures relating to first half of the year 2021, it may easily be said that there are many more individuals working in this field without being registered in the aforesaid Register.
However, the legislative instruments required for attorneyship profession could not be issued in direct proportion to the increasing interest shown to this profession, which in turn has paved the way for a lot of legal gaps therein. As a matter of fact, in spite of a great number of individuals working as and in the capacity of trademark or patent attorney, this profession is still not legally regulated as a separate group of profession, and this leads to large deficiencies of audit thereat.
That is why both due to the increasing interest shown to registration of industrial property rights and because of the deficiencies of audit, we are frequently encountering such cases or events wherein the name of this profession is abused and is even used solely for schemes to defraud.
For example, if you are a trademark owner in Turkey, your phone may at any time ring and you may hear any one of the following statements from an individual who is indeed not a trademark attorney: ”Hello, I am calling from Turkish Patent and Trademark Office. We have received a trademark application similar to your trademark, but we wished to call you first and to file this application in your name…” or “Registration fee for your application has not still been deposited / its term is about to expire…”, “Your trademark has not still been renewed / your yearly renewal fee has not still been paid…” or “If you do not file an application, we are going to recall your products from the market…”
Many colleagues serving as trademark or patent attorney are also trying to find a solution to this problem and to increase the awareness of both companies and individuals by their own means and efforts or through non-governmental organizations operating in this field of business.
While the scheme of things is as such in Turkey, we see that the United States is also fighting against similar problems. In a judgment of a District Court of the United States, the full text of which is accessible from this link, an individual named Viktors Suhorukovs defrauding a great number of people by creating a false impression that he is an authorized trademark attorney, when, in truth and in fact, he was not an authorized attorney, has been sentenced to in imprisonment of more than ten years and a judicial fine of 4.5 million USD. In the subject case, Suhorukovs admitted that he has founded companies named “Patent and Trademark Office, LLC” in Columbia and New York, and has sent renewal instruction letters to trademark owners in such manner to create confusion with United States Patent and Trademark Office (USPTO), and in his letters, has misrepresented to victims that “their registered trademarks were about to expire and neared their renewal dates and for renewal, they were required to pay a considerable amount of fee”. Through such renewal instruction letters, it is found out that Suhorikovs has received a total of 900 payments amounting to a total value of 1.2 million Dollars between the years 2017 and 2020.
The punishment inflicted on the related offense in the United States may be said to be fair, but yet in Turkey unfortunately the authorities do not demonstrate an active approach of the same extent for punishment of similar offenses. In Turkey, Turkish Patent and Trademark Office publishes some public statements aiming to prevent such schemes to defraud, and therein, confines itself only to state that in the case of doubts as to fee payment notifications or requests, the Office’s call centre should be called in order to check and confirm via the link shared by the Office whether the individuals or entities introducing themselves as trademark or patent attorney are really trademark or patent attorneys or not, and that if such inquiry reveals that the related individuals or entities are not trademark or patent attorneys, they should not ever be communicated, and a business relation should be entered into with them, and also that if an individual or entity, registered as a trademark or patent attorney, acts or behaves in conflict with the professional rules of attorneys, a complaint is recommended to be filed to the Office for discussion of the issue in the Patent and Trademark Attorneys Disciplinary Board.
In the decisions taken by the Turkish Patent and Trademark Attorneys Disciplinary Board, the jurisdiction of which is limited by the acts of trademark or patent attorneys registered in the Register, such acts are sanctioned generally by “Warning” penalty as specified in subparagraph (a) of second paragraph of article 30/A of the Law no. 5000 and in subparagraph (a) of first paragraph of article 6 of the Turkish Patent and Trademark Office Patent Attorneys and Trademark Attorneys Professional Rules and Disciplinary Regulation, or by such other punishments as “reprimand, temporary suspension of professional activities or dismissal from profession” as stipulated in the applicable laws and regulations. However, the scheme to defraud individuals or firms by acting as if it is a trademark or patent attorney is in fact an offense which can be considered and treated as an aggravated fraud act as regulated by article 158 of the Turkish Criminal Code, but just like similar other fraudulent acts committed conspiratorially, this act is also left without any prosecution and punishment in our country.
Accordingly, aside from the direct victims of such acts, due to impairment of our professional reputation, it is unequivocal that we, as trademark and patent attorneys, must also be careful for and pursue these offences and must legally fight against them together. We wish that deterrent punishments are applied in Turkey just like the punishments inflicted in the United States in a near future.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
by Ekin Karakus Ocal and Polen Arköse
15 December 2021
https://www.mondaq.com/turkey/trademark/1142370/a-comparison-of-turkish-and-american-perspectives-about-fraud-committed-by-a-person-pretending-to-act-as-a-trademark-attorney