Warnings for trade mark holders

The Commerce Commission continues to receive reports from business owners who have been contacted by overseas companies providing trade mark publishing or registration services.

In the cases we have seen, businesses have received an unsolicited letter containing details of their registered trade mark and when it is due to expire taken from the New Zealand Intellectual Property Office (IPONZ).

The letters generally provide a payment amount and details of how that payment can be made. In one case this was to a New Zealand bank account although the company was based overseas. Some letters require part of the form to be signed and returned. Often this is to a New Zealand P.O. Box or the address of a New Zealand virtual office. If a business responds they receive an invoice demanding payment. Sometimes the invoice includes the threat of debt collection if payment is not made within a certain timeframe.

Details about the nature of the service and the terms on which it is provided may not be disclosed at all or could be set out in small print or on the reverse of the letter.

Recipients have expressed concern that the letters misrepresent the nature of the services; that they could mislead people into thinking that that the business has already agreed to acquire the service and that the letters give the impression that the sender is a New Zealand business or related to IPONZ when that is not the case.

We recommend that businesses make sure that they get the trade mark services they want by reading letters or invoices about their trade mark carefully before paying or signing for anything.

What to look out for:

  • Letters about your trade mark – make sure you read them fully and understand what you are paying for or signing up for.
  • Letters from overseas companies – it might not be obvious where the company is based. While these letters are often sent from overseas sometimes they are imported and sent from a New Zealand address. Usually, however, the fact that the company is based overseas is recorded somewhere in the document.
  • Letters that ask you to sign something and send it back, send a cheque or make a payment into a bank account. Be careful before paying or signing for a service unless you understand what it is, how much you will be paying and how and when it will be provided.
  • Letters from organisations that you haven’t heard of before. If you get correspondence from someone other than IPONZ, WIPO or your IP agent, check it out.

IPONZ is the organisation in New Zealand that grants and registers intellectual property rights in New Zealand. The World Intellectual Property Organization (WIPO) is the global forum for IP services, policy information and cooperation. If your company uses an intellectual property agent to manage your IP make sure the people who pay the bills knows who that is. Some letters can come from companies that have names that use words like “organisation” or “office” or “patent and trade mark registry” but this does not mean that it is an official service.

IPONZ have also recently updated its warning page on misleading invoices.

Examples

Third party trade mark agency receives warning

Gibraltar-based company PTMO Limited (PTMO) has received a Commission warning for a notice it sent to New Zealand trade mark holders to pay $1,295 to renew their trade mark for 10 years.

The Commission investigation found PTMO was likely to breach the Fair Trading Act 1986 by giving trade mark holders the misleading impression that:

  • PTMO is a New Zealand based organisation which is affiliated with the official trade mark body, the Intellectual Property Office of New Zealand (IPONZ)
  • payment of the $1,295 renewal fee (and an additional class for $650) is required in order to maintain or renew their trade marks
  • trade mark holders are under an obligation to pay PTMO for those services.

Read more.

Commission recoups money for NZ trade mark holders – May 2016

The Commission has reached an interim agreement with TM Publisher, an overseas company who sent invoices for unsolicited services to New Zealand trade mark holders.

Under the interim court enforceable undertakings TM Publisher has agreed that anyone who paid the invoice from 6 April 2016 will be refunded directly by ANZ bank. TM Publisher’s bank account was frozen in March 2016. It contained over $200,000 in payments from New Zealand businesses.

Read more here.

NZ trade mark holders warned about letters requesting payment – April 2016

The Commerce Commission is alerting businesses that they are under no obligation to pay an invoice being sent in the post by TM Publisher to New Zealand trade mark holders.

The invoice for $1,638 relates to an overseas trade mark registration service, which is not necessarily a service that the recipient has agreed to buy. Anyone who does not want the service has no obligation to pay the invoice. The Commission is investigating TM Publisher; a company based overseas which purports to offer a web-based trade mark registration service. TM Publisher’s bank account has been frozen while decisions are made about how to deal with the $200,000 in payments that have already been made into the account by New Zealand businesses.

Read more.

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