Trademark renewal letter breached advertising codes
A company which sent numerous mail-outs to rights holders purporting to offer a trademark renewal service has been told it breached advertising codes and ordered to cease sending the document.
The mail-out, from a company called Intellectual Property Agency (IPA) Ltd, took the form of a notice which warned owners that their trademark was “up for renewal” and invited to them “sign and return” to renew it.
However, following complaints to the UK’s independent advertising regulator, the Advertising Standards Agency (ASA), it has been ordered to stop sending the document.
In an adjudication, published on November 6, the ASA wrote that the “prominent” uses of the words ''reminder" and ''order" and the layout of the form, implied that there was an “existing and on-going” relationship between the recipient and the sender.
It added: “We understood that no such previous relationship existed between the recipient and the advertiser.”
IP renewal services would normally be carried by legal representatives.
Various IP offices including the UK Intellectual Property Office (IPO) and the World Intellectual Property Organization have issued warnings on their websites warning rights holders to be aware of scams.
In its ruling, the ASA added that the use of the word "agency”' in the company title and the abbreviation to ''IPA" throughout the document may have caused recipients unfamiliar with the trademark renewal process to assume it was from an agency associated with the IPO.
“We understood however that no relationship existed between the IPO and the advertiser [IPA],” it added.
IPA, which according to its website has offices in London and Brussels, is registered in the Seychelles.
In response to the complaints, IPA’s representatives said the document informed the recipient that the service was optional and that it “merely acted as a reminder.”
It added that it was clear that the mailing “was not a bill or an invoice” and that the recipient “could contact their own representative in order to assist the renewal process.”
However, the ASA rejected the claims, ruling that the communications breached the Committee of Advertising Practice Code concerning misleading advertising.
“We considered that the ad did not make clear that it was a marketing communication and concluded that the ad was misleading. The ad should not appear again in its current form,” it wrote.
Chris McLeod, first vice president of the Institute of Trademark Attorneys and director of trademarks at Squire Sanders LLP in London, warned that companies like IPA tend to write directly to owners in order to “bypass” attorneys.
“The clear and increasing danger is that payments are made, clients receive nothing in return and often find it all but impossible to obtain a refund because they are arguably contractually bound,” Mcleod said.
It was not specified how much IPA was charging for its renewal service but Mcleod said it could stretch to more than £1,500.
“There are so many of these companies that the law of averages means that most trademark owners will receive a notification and that a percentage of them will pay them.
“Clients who have paid have been unable to, (or unable to afford to) pursue the company in question for a refund, either because their subsequent correspondence is unsurprisingly ignored, or because it would be more expensive to try to get the money back than the amount they have lost.”
IPA did not respond to requests to comment.
