Ad description
A website for Trade Mark Direct Ltd, www.trademarkdirect.co.uk, seen in August 2017, stated that Trade Mark Direct Ltd was the “UK’s No.1 Trade Mark Service”, “the UK’s leading trade mark advice and registration company” and “The no.1 firm in the UK”. The body text of the website stated, “We file and register more UK trade mark applications than any other firm as we have done in each of the last 3 years. This makes us the no.1 firm in the UK”.
Issue
Stobbs IP Ltd, which understood that Trade Mark Direct Ltd had registered fewer trademarks than some competitor firms, challenged whether the claims that Trade Mark Direct were the UK’s leading or no.1 trademark service were misleading and could be substantiated.
Response
Trade Mark Direct Ltd explained that some collected records which ranked trademark registrations, such as a 2016 Chartered Institute of Trade Mark Attorneys (CITMA) report, did not list them as the company that had filed the most trademarks because these records relied on all companies providing their own name under a section of the application documents called “Address for service”. They stated that they only filled in this part of the form on a small portion of filings, where it was absolutely necessary. They stated that the data was relevant only as a public data proxy for trade mark activity which allowed third parties to estimate how many trademarks they had filed.
Trade Mark Direct stated that, based on an analysis of the UK Intellectual Property Office’s (the IPO) registry data and the CITMA report, they had filed more UK trademarks than any other firm in the years 2011–2016. They provided a list of the trademarks that they had filed in the previous year and showed that they had registered more trademarks than the firm who was ranked as the highest in the CITMA report and the IPO’s data when the trademarks registered in their client’s name were incorporated. They believed that all their competitors filled in the “Address for service” section of the form, meaning that the figures from CITMA and the IPO would represent their competitors total number of trademarks registered. They stated that, as with other forms of legal representation, it was standard practice across the sector for the filing firm to be listed under “Address for service”. They stated that this is why the UK Intellectual Property Office (IPO) acted as if this was the case and that putting the filing firm under “Address for service” was standard practice taught on legal and paralegal courses in the UK. They further stated that from their conversations with other firms, they did not know of any other that did not put themselves as “address for service” and that the trade mark sector accepted the CITMA Top Filers survey (with the information based on a search from the “Address for service” filings ) as the standard. They noted that the fact that they were not currently listed on the CITMA Top Filers 2016 list as No. 1 was one of the reasons for the complaint. Trade Mark Direct noted that the CITMA Top Filers list included some caveats that suggested why figures may not have been representative, but that these caveats did not include companies not listing themselves as the “Address for Service”.
Trade Mark Direct also provided data from a web-traffic analysis software, which showed that the Google ads of their nearest competitors received just under 50% of their own ad impressions. It also showed that their nearest online competitor’s website was ranked 20,000 places lower in overall popularity by a separate third-party web traffic monitoring tool. Trade Mark Direct further provided some information from a separate web-analysis tool which showed that they received more visitors, more unique visitors and a longer average duration than their nearest two competitors. They argued that it could be deduced from the difference between the popularity of their website and their competitors that they had sold more trademarks than those competitors.
Trade Mark Direct also noted that, if another firm was consistently filing more than the company currently listed as the No 1 Filer, then it was likely that they would have made the claim themselves. As another firm had not made a claim on that basis, then it was unlikely that any other firm was filing more trademarks.
Assessment
Upheld
The ASA considered that consumers would interpret the claims “UK’s No.1 Trade Mark Service”, “the UK’s leading trade mark advice and registration company”, “The no.1 firm in the UK” and “we file and register more UK trade mark applications than any other firm” to mean that Trade Mark Direct had filed and registered more trademarks than any other company in the UK.
We understood that the “Top Filers 2016” report by the CITMA and the IPO’s registry data did not cite Trade Mark Direct as having registered the most trademarks. We understood, however, that Trade Mark Direct generally did not include their name under the “Address for Service” section of the application, meaning that a large portion of their filings would not be captured by the CITMA data. When those additional trademarks were included, their total number of trademarks registered was consistently higher than the figure for the firm listed as first by CITMA and in the IPO’s date every year from 2011 to 2016.
We noted Trade Mark Direct’s comments that all their competitors filled in their own names under the “Address for Service” section of the application. Although we accepted that this was likely to be common, we had not seen any evidence to prove that the entire market followed this practice. While we accepted that this was likely to be the case for many firms who filed trademarks, we noted that there were a number of similar online-only trademark registration companies on the CITMA list who potentially could do the same as Trade Mark Direct. Therefore, we considered the CITMA list and Trade Mark Direct’s own data was not sufficient itself to substantiate the claim that Trade Mark Direct was “the leading online trademark registration service”.
We reviewed the web-analytics data provided by Trade Mark Direct. We acknowledged that Trade Mark Direct’s website appeared to receive more visitors than two of their closest competitors and had generally more direct traffic and generally higher average visit duration. However, we considered that the difference in web-traffic between Trade Mark Direct and those two competitors was not so great that we could infer from web-traffic data that Trade Mark Direct had registered more trademarks. Furthermore, Trade Mark Direct did not provide comparative web-traffic data for every online trademark registration services that appeared on the CITMA report. We therefore considered that the web-traffic data was insufficient to show that Trade Mark Direct had registered more trademarks than their competitors.
Because the evidence provided by Trade Mark Direct was not adequate to substantiate the claim that they had registered the most trademarks in the UK, we concluded that the ad was 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 Trade Mark Direct Ltd not to use the claims “UK’s No.1 Trade Mark Service”, “the UK’s leading trade mark advice and registration company” and “The no.1 firm in the UK” unless they held evidence that they had registered more trademarks than any other business.
