Background
Summary of Council decision:
Two issues were investigated, both of which were Upheld.
Ad description
Three direct mailing ads, sent by The Trademark Office Ltd, as reminders to renew a trademark or a patent.
a. The ad for a trademark renewal stated "Trademark Office Ltd" at the top of the mailing and the advertiser's address was listed under this. The word "Reminder" appeared in large bold print at the top-right of the mailing. The mailing was separated into various boxed sections, which included the "Correspondence address" and details of the recipient's trademark, including a reference number, a barcode, an expiry date, a renewal period and a "GRAPHIC REPRESENTATION". Text in the "Order" box stated "Please return this document with your signature and/or company stamp in the appropriate space below if you would like to renew your trademark. Your trademark will be renewed for the period of another ten (10) years. The renewal fee is 965 £ for one class and 245 £ for each additional class for the whole period of ten (10) years … By signing this document you also empower Trademark Office Ltd to renew the trademark stated above on your behalf. Trademark office Ltd reminds companies when their trademarks are due for renewal … This renewal is optional and only acts as a reminder. We would like to inform you that we are not Intellectual Property Office and this is not a bill … If you have any questions regarding your renewal process contact us via e-mail …"
b. An ad for patent renewal stated "Patent & Trademark Office" at the top of the mailing and the advertiser's address was listed under this. The word "Reminder" appeared in large bold print at the top-right of the mailing. The mailing was separated into various boxed sections, which included the "Correspondence address" and details of the recipient's patent, including a patent application number, a barcode, an expiry date, a renewal date and a pictorial representation of the patent. Text in a box towards the top of the page stated "Your patent is about to expire … Four years after the filing date an annual fee must be paid in order to maintain your patent active. Your patent may cease to be valid if the annual fee is not submitted in time. Sign and return this document if you wish us to send you an invoice for the annual maintenance fee for this patent". Text in the "Order" box stated "Please return this document with your signature and/or company stamp if you wish to maintain your patent active. The maintenance/administrative fee is 730 £ for the period of one year. You will receive an invoice from us after we have received this signed document from you … This offer is optional and this document only acts as a reminder. We would like to inform you that we are not Intellectual Property Office and this is not a bill … If you have any questions regarding your renewal process contact us via e-mail …".
c. The ad for patent renewal contained the same wording as ad (b), but a different pictorial representation of the patent.
Issue
The ASA received four complaints:
1. Three complainants, who had each received one of the ads, challenged whether the ads were misleading, because they implied the advertiser was affiliated with the Intellectual Property Office, which is the official government body responsible for intellectual property rights in the UK.
2. One complainant objected that the ads would give the impression to a consumer that their patent had been renewed, when they believed this was not the case.
Response
The Trademark Office Ltd did not respond to the ASA's enquiries.
Assessment
The ASA was concerned by the Patent and Trademark Office's lack of response and apparent disregard for the Code, which was a breach of CAP Code (Edition 12) rule 1.7 (Unreasonable delay). We reminded them of their responsibility to respond promptly to our enquiries and told them to do so in future.
1. Upheld
The ASA noted that the mailings differed from many other marketing letters because they were each presented as a form. The mailings displayed a barcode and contained detailed information regarding each complainant's trade mark or patent. At the top of each form large bold text stated "Reminder." We therefore considered that the mailings gave the immediate impression that they were official documents created by the body responsible for registering trademarks or renewing patents in the UK, which is the Intellectual Property Office (IPO). We understood the forms also looked similar to those used by IPO to renew trademarks and patents. The impression that the mailings were official was developed by the content of the template forms. In ad (a), which was for the renewal of a trademark, text below the correspondence address and trade mark name stated "Your trademark is about to expire … Your trademark registration is valid for ten (10) years and may subsequently be renewed for ten years at a time. Sign and return this document in order to renew your trademark". In ads (b) and (c), text below the correspondence address stated "Your patent is about to expire … Your patent may cease to be valid if the annual fee is not submitted in time. None of the prominent text positioned towards the top of each of the mailings explained the Patent and Trademark Office's status as a private company or the precise nature of the service being offered. We considered, therefore, that the appearance of the mailings implied that they were official correspondences regarding the renewal of a trade mark or a patent with IPO, rather than unsolicited marketing from a private company.
We acknowledged that each mailing did indicate the nature of the company and the service offered. In ad (a), text in the "ORDER" box explained that by signing the form "you also empower Trademark Office Ltd to renew the trademark stated above on your behalf" and that "Trademark Office Ltd reminds companies when their trademarks are due for renewal". We noted that further text stated "We would like to inform you that we are not Intellectual Property Office and this is not a bill", confirming that the company had no links with IPO. The mailing then required a signature from an authorised party, who by signing consequently accepted the terms and conditions on the reverse side of the form. We noted that the terms and conditions did not explicitly repeat that the Trademark Office had no links to IPO. In ads (b) and (c), text in the "ORDER" box stated "Please return this document with your signature and/or company stamp if you wish to maintain your patent active … By signing this document you also empower Patent & Trademark Office to extend your patent for the period of one year on your behalf". We further noted that text stated "We would like to inform you that we are not Intellectual Property Office and this is not a bill".
We understood that the Patent and Trademark Office charged a consumer higher prices to renew a trademark or patent through them, when compared with dealing with IPO directly. To renew a single class trademark for ten years through the Patent and Trademark Office would have cost a consumer £965, when compared with £200 through IPO. To renew a patent for a year, the Patent and Trademark Office charged £730. However, IPO charged £70‒£600, depending on how many years the patent had been active. We considered that this significant difference in price made it even more important that it was made clear to a consumer that the Patent and Trademark Office were a private company with no affiliation to IPO. Although we acknowledged that parts of the mailings did explain the nature of the services offered and the lack of affiliation with IPO, we considered that those statements were not sufficient to counteract the overall impression of the mailings as official documents. We therefore considered the ad was misleading, because it did not make it clear that the Trademark Office was a private company with no affiliation to IPO.
On this point the ad breached CAP Code (Edition 12) rules 2.1 (Recognition of marketing communications) and 3.1 3.1 Marketing communications must not materially mislead or be likely to do so. and 3.3 (Misleading advertising).
2. Upheld
We acknowledged that text in the "ORDER" box in ads (b) and (c) stated that a consumer only authorised the Patent and Trademark Office to renew a patent on "your behalf". Further text stated "We would like to inform you that we are not Intellectual Property Office and this is not a bill". We considered that the Patent and Trademark Office's attempts to explain that they did not have the authority themselves to renew a patent, were not sufficient to counteract the overall impression of the mailings as official documents. We therefore concluded the ad was misleading, because consumers may believe their patent would be renewed by the Patent and Trademark Office, when actually they had no authority to do this themselves.
On this point the ad breached CAP Code (Edition 12) rules 2.1 (Recognition of marketing communications) and 3.1 3.1 Marketing communications must not materially mislead or be likely to do so. and 3.3 (Misleading advertising).
Action
The mailing must not appear again in its current form. We told the Patent and Trademark Office to amend the layout of its mailing to ensure it did not imply it was official correspondence from a company affiliated with the IPO. We asked CAP to inform its members of the problem with Patent & Trademark Office.
