Background
Summary of Council decision:
Five issues were investigated, of which four were Upheld and one was Not upheld.
Ad description
Two direct mailings, relating to the renewal of registered trade marks:
a. The first mailing, sent in a plain white envelope, stated "Trademark Renewal Service Ltd" at the top, next to a circular logo which featured the text "TRADEMARK RENEWAL SERVICE" around the edge and an outline image of 'Lady Justice' in the centre. The recipient's address was listed underneath, next to text that stated "Expiry date: [date] Renewal period: [date] to [date]". Text then stated "Trademark Renewal You are the registered owner of the trademark ‘[trademark]’ Your trademark is due to expire and can be renewed from [date]. After renewal, your trademark will be protected for another period of 10 years". A box headed "Publication from the IPO - Database" included the relevant trademark number, classes of goods and services in which the trademark was registered, the text of the trademark, the status, filing date, registration date, publication date, residence country, ADP number, and the name of the owner. Text underneath stated "Please return this document accompanied by your signature and/or your company stamp in the space provided below if you would like to renew your trade mark. Your trade mark will be renewed for a further period of 10 years. The renewal fee is £760 for the first registration class, and £150 for each additional class. You will receive an invoice from us after we have received this signed document from you. By signing this document, you, as our client, authorise Trademark Renewal Service Ltd. to renew the trade mark stated above on your behalf, and to represent you in the renewal procedure by the UK Intellectual Property Office. With this letter, Trademark Renewal Services [sic] Ltd. reminds companies and private persons that their trade marks are due for renewal. The renewal is optional. This letter only acts as a reminder until you sign it and make the order. We would like to inform you that this is not a bill. If you have any questions regarding your renewal please contact our renewal department by email [email protected] or by telephone 02033725320. We hereby confirm that we have read and agree with the terms and conditions as stated on the back of this document". The advertiser's company name, address and other contact information was listed at the bottom of the page in small print. Terms and conditions were listed on the back of the page, in grey small print.
b. The second mailing was the same as the first, except that it also included a graphic representation of the trade mark in the box headed "Publication from the IPO - Database".
Issue
The Intellectual Property Office (IPO), Devon and Somerset Trading Standards, and a trade mark owner challenged whether:
1. the envelopes made clear that they contained a marketing communication;
2. the overall presentation of the mailings, including the advertiser's logo and the replication of details from the Trade Mark Register, was misleading, because they implied they were an official reminder and did not make clear the advertiser was a private company that had no affiliation with the IPO;
3. the ads were misleading, because they failed to make clear that use of the advertiser's service was optional and at an additional cost to the renewal fees charged by the IPO;
4. the ads were misleading, because they implied that the trade mark must be renewed shortly after receipt of the ad, when it was not possible to renew a trade mark with the IPO until six months before its expiry date;
5. the terms and conditions were sufficiently legible.
Response
Trademark Renewal Service Ltd said that 99% of trademark holders were businesses and that the recipients of the ads were people who had the authority to sign for their companies and therefore should be able to understand what they signing. They said the front page of the ad comprised no more than 15 lines and that an authorised signatory could not be misled by only 15 lines.
1. Trademark Renewal Service said they used standard plain white envelopes, as did most people in the UK. They asked whether there was any regulation relating to envelopes which they should be aware of.
2. Trademark Renewal Service said their logo was not similar to any official UK correspondence or authority. They said the replication of trade mark details was necessary in order to identify precisely as to which trade mark they were offering their services for; the details were also available online to the public. They said they did not know what the ADP number was, but understood that, like the Trade Mark Number, it was a unique identifier which was necessary to know in order to be sure to which trade mark the letter related. They said they could remove the ADP number from their ads if that was necessary.
3. Trademark Renewal Service highlighted that text in the paragraph underneath the trade mark details included the sentence "The renewal is optional" and added that they clearly identified themselves as a legal, limited private entity by adding "Ltd" to the company name, in large bold text at the top of the letters, and repeating that in small print in the footer along with their Companies House registration number.
Trademark Renewal Service considered that, once stated that their company was a private, limited legal entity, it was obvious that in order to perform its task they had to pay costs to their suppliers (the IPO, which validated the renewal), and to charge for that service. It took time and knowledge to fill in the renewal form on behalf of their customers, to send it, and to answer their customers' questions about their services. They said they weren't aware of any other businesses which detailed to customers their supplier costs or profit margins. They said the cost stated on the front page of the ad included the fee they paid to the IPO on behalf of the customer. They said that no additional fees or VAT was charged to the customer and clarified that a clause in the terms and conditions which suggested otherwise was included in error.
4. Trademark Renewal Service said that when clients asked when they should renew their trade mark, they told them that it was not possible to do so until six months before the expiry date. They added that the expiry date of the trade mark was clearly written at the top of each ad. They said the ads did not state any time constraint and so they did not see how the ads could imply that the trade mark must be renewed shortly after receiving the letter. They highlighted that the ads stated "Your trademark is due to expire and can be renewed from [a date six months before the expiry date]". They considered it could not be clearer to recipients that they had a lot of time in which to renew their trade mark or decide whether or not to use their services. They said it was also clearly stated in the paragraph of text below the trade mark details that "This letter only acts as a reminder".
5. Trademark Renewal Service did not comment specifically on this point.
Assessment
1. Upheld
The CAP code required that marketing communications must be obviously identifiable as such. The ASA noted there was nothing on the envelopes in which the ads were sent to identify that they contained a marketing communication and therefore concluded the ads were in breach of the Code in that regard.
On this point, the ads 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 the mailings included some indications as to the nature of the company and the services they offered. Trademark Renewal Service's name, including the suffix "Ltd" appeared at the top of the mailings in large bold text and as part of the logo, and in small text at the bottom of the page along with the company's contact details, VAT registration and Companies House registration numbers. The paragraph of text underneath the box which contained details of the trade mark for renewal included the text "By signing this document, you, as our client, authorise Trademark Renewal Service Ltd. to renew the trade mark … and to represent you in the renewal procedure by the UK Intellectual Property Office" and referred to the mailings as a "reminder" from Trademark Renewal Service. The mailings also required a signature from an authorised party, who by signing would confirm their acceptance of the terms and conditions overleaf, which included near the top the text "N.B. TRS is an independent company providing services to its clients. It is not connected with nor does it act on behalf of the UK Intellectual Property Office".
We noted the mailings were 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 they 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 was due to expire, the date from which it could be renewed, and the details of the trade mark including the ADP number, which was used by the IPO to identify trade mark owners. We also noted the paragraph of text below those details began with the sentence "Please return this document accompanied by your signature and/or your company stamp in the space provided below if you would like to renew your trade mark" which we noted did not make clear that the renewal service on offer was one in which a private company would act on the recipients' behalf with the IPO. We noted that text which made that explicit did not appear until partway through that paragraph.
We furthermore considered that, because the envelopes in which the mailings were sent did not indicate that they 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 mailings 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 mailings 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 mailings. We concluded the ads were therefore misleading.
On this point, the ads 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 the clause in the terms and conditions which suggested that the IPO's fees would be charged to recipients in addition to Trademark Renewal Service's fee had been included in error, and as such we understood that the prices quoted in the mailings did include the cost of those fees. We therefore considered those prices were not misleading to consumers. Notwithstanding that, as referenced above, we considered the overall presentation of the mailings created the impression they were 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 the ads were misleading, because they did not make clear the advertised service was optional.
On this point, the ads 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), but did not breach rules
3.17
3.17
Price statements must not mislead by omission, undue emphasis or distortion. They must relate to the product featured in the marketing communication.
and
3.19
3.19
If a tax, duty, fee or charge cannot be calculated in advance, for example, because it depends on the consumer's circumstances, the marketing communication must make clear that it is excluded from the advertised price and state how it is calculated.
(Prices).
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 communications were sent approximately three months before the expiry date of the trade mark. We noted that one of the complainants had received Trademark Renewal Service's mailing only two weeks before the trade mark expired, but that the other two complainants received the mailings 14 months and 12 months, respectively, before the expiry. We therefore understood that recipients would not always be aware at the time of receiving Trademark Renewal Service's mailing that the IPO would be sending out their own reminder in due course.
We acknowledged the expiry date of the trade mark was stated in the top right-hand corner of each mailing, and that further text referred to the date from which the trade mark could be renewed. However, we also noted that text referred to the recipients' trade mark being "due to expire" and "due for renewal". We considered that in the context of ads which gave the impression they were 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 Trademark Renewal Service much earlier than would be necessary if they were to renew their trade mark directly with the IPO. Furthermore, we 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 the ads were therefore misleading in that regard.
On this point, the ads 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, and whilst we considered that this text could have been clearer, we noted it was legible. We also noted that text on the front of the ad stated "We hereby confirm that we have read and agree with the terms and conditions as stated on the back of this document" and we therefore considered that recipients' attention was adequately drawn to the presence of those terms and conditions.
On this point, we investigated the ads 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 we did not find them in breach.
Action
The ads must not appear again in their current form. We told Trademark Renewal Service Ltd to ensure its future mailings were obviously identifiable as marketing communications, and did not imply they were from the IPO or a company affiliated with the IPO. We also told Trademark Renewal Service Ltd to ensure their future mailings 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.
CAP Code (Edition 12)
2.1 3.1 3.10 3.17 3.19 3.3 3.9
