A direct mailing was headed with the advertiser's name and address and a logo which was bordered with the words "TRADEMARK RENEWAL SERVICE". The word "Reminder" appeared in bold above various boxed sections of a form that included the "Correspondence address" of the recipient and details of the recipient's trade mark, 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 accompanied by your legal signature and/or your company stamp in the appropriate space below, if you would like to renew your trade mark. Your trade mark will be renewed for a period of another ten (10) years. The renewal fee is £760 ... 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 with the UK Intellectual Property Office. Trademark Renewal Service Ltd reminds, with this letter, companies and persons, that their trade marks are due for renewal. The renewal is optional and this form only acts as a reminder, before it has been signed to 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 via e-mail: [email protected] > ...".
The recipient, NBC Bird & Pest Solutions Ltd, challenged whether the overall presentation of the mailing was misleading, because it was not clear that it had been sent by a private company that had no affiliation to the UK Intellectual Property Office (IPO).
Trademark Renewal Service Ltd (TRS) said the front page of the mailing clearly stated the type of service they offered. No such service was provided by the IPO and therefore that service was not one which customers could obtain other than from a private organisation such as their own.
They stated that all correspondence and stationery they issued clearly stated at the top that they were a private limited company, and that as such they could not be a government department or affiliated to the IPO. They drew attention to text in the "Order" section of the form which stated "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 with the UK Intellectual Property Office". They considered that this piece of text made clear that they were a separate entity from, but would represent their clients with, the IPO.
TRS further noted that the final part of the "Order" section stated "We agree and confirm that we have read and comply with the terms and conditions stated on the back of this document". They said even a cursory examination of those terms and conditions would make clear that their company had no affiliation with the IPO, because the first paragraph contained the sentence, in bold, "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". They considered that a more thorough inspection of the terms and conditions would also show that the document was a standard contract between two companies and that the price was quoted exclusive of VAT. They said the IPO and other official organisations did not charge VAT or have any terms and conditions.
Regarding the layout of the mailing, which appeared to resemble a form rather than a standard letter, TRS said they needed, when offering their services, to be precise about the trade mark in question and therefore had to include many details which could not be properly presented in a standard letter. The appealing presentation was part of the marketing and helped them to sell their services more effectively. They stated, however, that their form was not similar to any form used by official organisations within the UK. They therefore did not see any reason for it to be considered differently to any other kind of commercial letter.
TRS believed that a person authorised to sign the form for their company would at least read the letter and conduct a cursory examination of the document, and would understand the difference between a private limited company and an official organisation.
The ASA understood that the IPO offered a similar service as TRS in that they too sent reminder letters, albeit presented in a different format to TRS's mailing, to businesses whose trade marks were due to expire, inviting recipients to renew their trade mark and providing instructions on how to do so. We noted that, whereas the IPO sent their letter approximately three months before the expiry date of the trade mark, the complainant had received TRS's communication almost 18 months in advance of the expiry. We therefore understood that businesses would not always be aware at the time of receiving TRS's mailing that the IPO would be sending out their own reminder letter in due course.
We noted that the mailing differed from many marketing letters in being presented as a form. It displayed a barcode and extensive details as to the trade mark in question, and as such we considered that it gave the immediate impression of an official document created by the body responsible for registering trade marks in the UK. That impression was strengthened by text below the correspondence address and trade mark name that stated "Your trade mark is about to expire ... Your trade mark registration is valid for 10 years and may subsequently be renewed for 10 years at a time. Sign and return this document in order to renew your trade mark". That text, which was written in bold and positioned towards the top of the page, was very prominent in the mailing, but did not clearly explain the status of TRS as a private company or the precise nature of the service offered. We considered, therefore, that the appearance of the mailing was such that it implied correspondence regarding the renewal of the trade mark between the business and the relevant authority rather than unsolicited marketing from a private company.
We acknowledged that the mailing did contain some indications as to the nature of the company and the services they offered. TRS's full name, including the suffix "Ltd", was given at the top of the page and the "Order" section on the front of the form described the responding recipient as a "client", with TRS's involvement being to "represent [the client] in the renewal procedure with the UK Intellectual Property Office". Further text stated that the renewal procedure was optional and the mailing acted only as a reminder to the business. The mailing then required a signature from an authorised party, who by signing would confirm their acceptance of the terms and conditions that were listed on the reverse side. We understood that those terms and conditions, near the top of the page, contained text describing TRS's status as "an independent company providing services to its clients ... not connected with, nor [acting] on behalf of the UK Intellectual Property Office".
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. We therefore concluded that the ad was misleading because it did not make clear that TRS was a private company with no link to the IPO.
The ad breached CAP Code (Edition 12) rules
Marketing communications must be obviously identifiable as such.
(Recognition of marketing communications),
Marketing communications must not materially mislead or be likely to do so.
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).
The mailing must not appear again in its current form. We told Trademark Renewal Service Ltd to amend the layout of its mailing to ensure it did not imply it was official correspondence from a company affiliated with the IPO.