Trade mark owners often receive bogus or misleading communications from companies soliciting the renewal of their trade marks, often way ahead of time, and often on terms that are both expensive and have very onerous conditions tucked away in the very small print.
Such communications are often designed to appear as though they originate from an official source, like the UK Intellectual Property Office or the European Trade Mark Registry, OHIM.
One company creating and sending such letters, Trademark Renewal Service Ltd (TRS), has now been reprimanded by the Advertising Standards Authority (ASA) and told to completely change the design and content of their letters which they had specifically designed to look like ‘official communications from the Trade Marks Registry.
TRS operated by searching the public trade mark databases and then sending a ‘renewal reminder’ 18 months before the expiry date of their trade marks soliciting instructions to renew at a cost which some trade mark professionals consider exorbitant and unnecessary.
The letter which was bordered with the words "TRADEMARK RENEWAL SERVICE". The word "Reminder" appeared in bold above various boxed sections of a form that included the "Correspondence address" of the recipient and details of the recipient's trade mark were displayed, including a reference number, a barcode, an expiry date, a renewal period and a "GRAPHIC REPRESENTATION” of the trade mark concerned.
The ASA found that the design of such a letter was clearly an attempt to mimic official correspondence with the intention of tricking gullible trade mark owners into thinking this was an official fee that needed to be paid to renew the trade mark, even though the mailing did contain some indications that it originated from a third party company. Therefore, the ASA judged it to be misleading and TRS was asked to amend the layout. Should TRS not amend their letter sufficiently or refuse to do so at all, the ASA can withhold trading privileges, such as Royal Mail’s bulk mail discount.
The formal ASA Report can be found here