Background
Summary of Council decision:
Five issues were investigated, of which one was Not upheld and four were Upheld.
Ad description
A direct mailing relating to trademark renewals was sent to registered trademark owners.
Issue
The Intellectual Property Office (IPO) challenged whether:
1. the envelope made clear that it contained a marketing communication;
2. the overall presentation of the mailing, including the replication of details from the Trademark Register, was misleading, because it suggested that it was an official reminder and did not make clear that it had been sent by a private company that had no affiliation with the IPO;
3. the ad was misleading, because it failed to make clear that the use of the service, not just the renewal, was optional and at an additional cost over and above the IPO registration costs;
4. the ad, usually sent over a year before expiry, was misleading, because it suggested that renewal needed to be made shortly after receipt of the mailing, whereas it was not possible to pay the fees to the IPO more than six months prior to the expiry date; and
5. the terms and conditions, which appeared on the back of the mailing in a small, pale grey font, were sufficiently legible.
Response
1. Patent & Trademark Agency Ltd said that they did not see that it was necessary to indicate that the letter contained a marketing communication.
2. Patent & Trademark Agency referred to text in the mailing which stated "Patent & Trademark Agency Ltd is not associated with the official UK Patent office. We would like to bring to your attention that Patent & Trademark Agency Ltd is an independent renewal processing company ..." and said that their company name, ending "Ltd" showed that they were not a government organisation. They believed the mailing made clear that their reminder was not official.
3. Patent & Trademark Agency referred to text in the mailing which stated "Patent & Trademark Agency Ltd is an independent renewal processing company within the intellectual property area. This is an optional offer ... You can also contact your legal representative to perform the renewal for you". They believed the text made clear that the use of their service and the renewal was optional. They believed that recipients would see from the flat rate quoted in the mailing that Patent & Trademark Agency was not a non-profit organisation and that a profit margin was included in their rate. They believed that dividing the cost so that it showed Patent & Trademark Agency's cost separately from the IPO's registration cost would be confusing to recipients.
4. Patent & Trademark Agency said they sent out reminder letters early because, during the ten years of a trade mark registration, most trade mark holders had changed their address. They said the additional time was necessary for them to find the correct address if a reminder letter was returned undelivered. They pointed out that, in any case, the earliest renewal date was stated in the mailing.
5. Patent & Trademark Agency said they were willing to use darker, larger font for their terms and conditions if necessary.
Assessment
1. Upheld
The CAP Code stated that marketing communications must be obviously identifiable as such. The ASA noted there was nothing on the envelope in which the ad was sent to identify that it contained a marketing communication. Because of that, we concluded that the ad breached the Code.
On this point, the ad breached CAP Code (Edition 12) rule 2.1 2.1 Marketing communications must be obviously identifiable as such. (Recognition of marketing communications).
2. Upheld
We acknowledged that the mailing contained some information about the nature of the company and the services they offered. Patent & Trademark Agency's name, including the suffix "Ltd" appeared at the top in large bold text, and in smaller text further down the page in the line "Cheque payable to Patents & Trademark Agency Ltd". The paragraph of text above the box, which contained details of the trade mark for renewal, included the text "By returning and signing this document you also empower Patent & Trademark Agency Ltd to conduct and perform the renewal process on your behalf ... Patent & Trademark Agency Ltd is not associated with the official UK Patent office. We would like to bring to your attention that Patent & Trademark Agency Ltd is an independent renewal processing company within the intellectual property area. This is an optional offer. This document is not an invoice or a bill. You can also contact your legal representative to perform this renewal for you ...".
We noted that the mailing was presented in a layout which was similar to an invoice or other similar form, and included extensive details of the trade mark in question. As such, we considered it gave the immediate impression of an official document created by the IPO, which was responsible for registering and renewing trade marks in the UK, or a company affiliated with the IPO. We considered that impression was reinforced because the first information presented to recipients was that their trade mark registration was due to expire; a date at which the renewal process would start and an invitation to complete and return the form to renew their trade mark registration. We also noted that the paragraph of text below that information began with the sentence "In order to renew your trademark, please sign and return this document in the enclosed prepaid envelope. The trademark stated on this document will be renewed for another 10-year period" which we noted did not make clear that the renewal service on offer was one in which a private company would act on the recipient's behalf with the IPO. The text which made that explicit did not appear until partway through that paragraph.
We furthermore considered that, because the envelope in which the mailing was sent did not indicate that it contained a marketing communication, recipients would be more likely to view the contents on the assumption that it was private correspondence rather than an ad. In the context of a mailing which reminded recipients to renew a trade mark, we considered recipients would assume that that private correspondence had come from the IPO, or an affiliated company, unless it was clearly and prominently indicated otherwise.
Although we acknowledged that some parts of the mailing did elaborate on the nature of the service offered and the lack of affiliation with the IPO, we considered that those statements were not sufficient to counteract the impression created by the overall presentation of the mailing. Because of that, we concluded that the ad was misleading.
On this point the ad breached CAP Code (Edition 12) rules
2.1
2.1
Marketing communications must be obviously identifiable as such.
(Recognition of marketing communications) and
3.1
3.1
Marketing communications must not materially mislead or be likely to do so.
and
3.3
3.3
Marketing communications must not mislead the consumer by omitting material information. They must not mislead by hiding material information or presenting it in an unclear, unintelligible, ambiguous or untimely manner.
Material information is information that the consumer needs to make informed decisions in relation to a product. Whether the omission or presentation of material information is likely to mislead the consumer depends on the context, the medium and, if the medium of the marketing communication is constrained by time or space, the measures that the marketer takes to make that information available to the consumer by other means.
(Misleading advertising).
3. Upheld
We noted that the paragraph of text above the box which contained details of the trade mark for renewal, included the text "This is an optional offer". However, as explained above, we considered the overall presentation of the mailing created the impression that it was from the IPO or an affiliated company, and therefore recipients would understand that the only way in which to renew the trade mark was by responding to the mailing. We concluded that the ad was misleading, because it did not make clear that the advertised service was optional.
On this point the ad breached CAP Code (Edition 12) rules
2.1
2.1
Marketing communications must be obviously identifiable as such.
(Recognition of marketing communications) and
3.1
3.1
Marketing communications must not materially mislead or be likely to do so.
and
3.3
3.3
Marketing communications must not mislead the consumer by omitting material information. They must not mislead by hiding material information or presenting it in an unclear, unintelligible, ambiguous or untimely manner.
Material information is information that the consumer needs to make informed decisions in relation to a product. Whether the omission or presentation of material information is likely to mislead the consumer depends on the context, the medium and, if the medium of the marketing communication is constrained by time or space, the measures that the marketer takes to make that information available to the consumer by other means.
(Misleading advertising).
4. Upheld
We understood the IPO also sent letters to trade mark holders whose trade marks were due to expire, inviting recipients to renew their trade marks and providing information on how to do so. Those letters were sent approximately three months before the expiry date of the trade mark. We noted that Patent & Trademark Agency's mailing was sent 15 months before the expiry. We therefore understood that recipients would not always be aware at the time of receiving Patent & Trademark Agency's mailing that the IPO would be sending out their own reminder in due course.
We acknowledged that the expiry date of the trade mark was stated in the box in the mailing which contained details of the trade mark for renewal. However, we also noted that other text stated "Renewal process starts: [date six months before expiry]", "If not renewed, your trademark registration will expire" and "In order to renew your trademark, please sign and return this document in the enclosed prepaid envelope". We considered that, in the context of a mailing which gave the impression that it was from the IPO or an affiliated company, and which had a similar layout to an invoice or other similar form, it was ambiguous as to the length of time in which recipients had to respond to ensure renewal of their trade mark. In that context, we considered it likely that some recipients would understand they must respond imminently when that was not the case, and as such would be less likely to take time to seek out alternative sources of information about renewing their trade mark, and would make payments to Patent & Trademark Agency much earlier than would be necessary if they were to renew their trade mark directly with the IPO. We furthermore noted that neither the main body of the ad nor the terms and conditions included a statement informing recipients of their right to a 'cooling-off' period after signing and returning the ad. We concluded that the ad was therefore misleading.
On this point, the ad breached CAP Code (Edition 12) rules
2.1
2.1
Marketing communications must be obviously identifiable as such.
(Recognition of marketing communications) and
3.1
3.1
Marketing communications must not materially mislead or be likely to do so.
and
3.3
3.3
Marketing communications must not mislead the consumer by omitting material information. They must not mislead by hiding material information or presenting it in an unclear, unintelligible, ambiguous or untimely manner.
Material information is information that the consumer needs to make informed decisions in relation to a product. Whether the omission or presentation of material information is likely to mislead the consumer depends on the context, the medium and, if the medium of the marketing communication is constrained by time or space, the measures that the marketer takes to make that information available to the consumer by other means.
(Misleading advertising).
5. Not upheld
The terms and conditions were printed in a small, light grey font on the back of the ad. While we considered that the text could have been clearer, we noted it was legible. We also noted that text on the front of the ad stated "Sign and date this form after having reviewed and accepted all terms and conditions on the front and back of this form". We considered, therefore, that recipients' attention was adequately drawn to the presence of the terms and conditions.
On this point we investigated the ad under CAP Code (Edition 12) rules
3.9
3.9
Marketing communications must state significant limitations and qualifications. Qualifications may clarify but must not contradict the claims that they qualify.
and
3.10
3.10
Qualifications must be presented clearly.
CAP has published a Help Note on Claims that Require Qualification.
(Qualification), but did not find it in breach.
Action
The ad must not appear again in its current form. We told Patent & Trademark Agency Ltd to ensure its future mailings were obviously identifiable as marketing communications; that they did not suggest that they were from the IPO or a company affiliated with the IPO; and that they made clear that the service was optional and that the renewal process could begin a maximum of six months before a trade mark's expiry.
