Ad description

The website for the trademark registration service www.trademarkeagle.co.uk, seen in March 2017, featured the claims “The Leading Trademark Registration Service” and “the leading online trademark registration service.”

Issue

Stobbs IP Ltd challenged whether the claims “The Leading Trademark Registration Service” and “the leading online trademark registration service” were misleading and could be substantiated.

Response

Trademark Eagle Ltd believed the claims “the leading trademark registration service” and “the leading online trademark registration service” would be regarded as puffery by consumers They did not believe consumers would understand these phrases to mean they were the number one trade mark registration service in terms of trademarks registered. They stated this type of claim was common in the industry. They stated, for clarification, they would in future refer to themselves only as an “online trademark registration service”.

Trademark Eagle Ltd explained they solely performed the function of registering the trademark. They considered this function to be a different service to other businesses that operated within the market, such as trade mark attorneys who managed the entire application process, including taking instructions from their clients, carrying out manual searches of the register and providing legal advice.

Trademark Eagle Ltd stated they also believed they were the leading online trademark registration service in the sense that they were the most innovative because they were the first to offer an unlimited online search platform and the only service to do so at the time of the complaint.

Trademark Eagle Ltd provided a document entitled “Top Filers 2016” published by the Chartered Institute of Trade Mark Attorneys in September 2017 which they stated was the most recent set of annual statistics for the numbers of trade marks filed by UK firms. They stated the list showed they were the leading online trade mark registration service when compared to businesses that also solely registered the trademark and did not manage the application process.

Assessment

Upheld

The ASA considered business customers would understand the claims “the leading trademark registration service” and “the leading online trademark registration service” to mean that Trademark Eagle Ltd had registered more trademarks than any other business and any other online business. We considered those viewing the website would understand the claims to refer to all companies who registered trademarks, irrespective of whether their sole function was to register the trademarks, like Trademark Eagle, or whether they instead managed the entire trademark application process.

We noted the “Top Filers 2016” report by the Chartered Institute of Trade Mark Attorneys (CITMA) submitted by Trade Mark Eagle showed Trade Mark Eagle was 11th and 45th in the overall list of trade mark filers in the UK and the EU respectively. That indicated Trade Mark Eagle was not the overall leading trademark registration service.

We acknowledged all the companies above Trade Mark Eagle in the list were companies that managed the entire application process including offline services, meaning that Trade Mark Eagle was the highest online company on the list who solely registered trademarks and did not manage the application process. However, as mentioned above, we considered consumers would understand the claim “the leading trademark registration service” to encompass all companies that registered trademarks.

We further understood the CITMA list did not include instances where the company had registered the trademark in the client’s name. We understood other online companies that solely performed the function of registering the trademark and did not manage the application process would register the trademark in their client’s name, and would accordingly have a material impact on a company’s total number of registered trademarks. We therefore considered the CITMA list itself was not sufficient to substantiate the claim that Trademark Eagle Ltd was “the leading online trademark registration service”.

Trade Mark Eagle did not provide any other comparative evidence in relation to online trademark registration services. For instance, they did not provide comparative data on the number of trademarks registered in clients’ names or comparative sales figures.

Because Trademark Eagle Ltd did not provide adequate evidence to demonstrate that they had registered more trademarks than any other business and any other online business, we concluded that the claims “the leading trade mark registration service” and “the leading online trademark registration service” were misleading.

The ad breached CAP Code (Edition 12) rules  3.1 3.1 Marketing communications must not materially mislead or be likely to do so.  (Misleading advertising),  3.7 3.7 Before distributing or submitting a marketing communication for publication, marketers must hold documentary evidence to prove claims that consumers are likely to regard as objective and that are capable of objective substantiation. The ASA may regard claims as misleading in the absence of adequate substantiation.  (Substantiation),  3.33 3.33 Marketing communications that include a comparison with an identifiable competitor must not mislead, or be likely to mislead, the consumer about either the advertised product or the competing product.  (Comparisons with identifiable competitors).

Action

The ad must not appear again in its current form. We told Trademark Eagle Ltd not use the claim “the leading trademark registration service” unless they could prove they had registered more trademarks than any other business. We told them not to use the claim “the leading online trademark registration service” unless they could prove they had registered more trademarks than any other online business.

CAP Code (Edition 12)

3.1     3.33     3.7    


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