Intellectual Property Law -Trade Mark owners beware of scams and slick marketing - Trade Mark Lawyer Auckland - Dukesons Business Law

November 2016

This Blog isn't legal advice – if you need legal advice on any trade mark issue or on any business law or commercial law issue, please contact me.

I'm a business lawyer and in my capacity as a trade mark lawyer (intellectual property lawyer) in Auckland, I've sent updates previously about the need for trade mark owners to be weary of scams and slick marketing. Trade Mark owners should only act on genuine communications from IPONZ or their trade mark lawyer or patent attorney.

The Commerce Commission worked with ANZ Bank to successfully return around $600,000 to trademark holders who were misled about the need to pay an invoice from Swiss company, TM Publisher (TMP).

The CC found that TMP was likely to have breached the Fair Trading Act 1986 when it sent New Zealand registered trademark holders an invoice about their trademark registration. The CC considered that the invoice:

  • was likely to mislead trademark holders into thinking that they were paying to re-register their trademark when they were actually paying to publish it on an overseas website;
  • failed to clearly inform the trademark holder that they were under no obligation to make payment for the services offered.

More than 280 trademark holders made over $600,000 in payments to TMP’s ANZ account between 10 March 2016 and 9 May 2016 after receiving the TMP invoice. All of those payments were reversed with ANZ’s assistance.

TMP gave the Commission court enforceable undertakings in April 2016 which resulted in the reversal of payments to around 100 trademark holders and others were refunded “on request.”

The CC said: “We advise businesses to be careful about any unsolicited requests for payment and to do their due diligence to check the details of the service offered and that the service is in fact something they want. All the trademark holders we spoke to thought the $1,638 fee was for their trademark registration renewal when it was not,” she said.

The Commission announced the end of its investigation this week and TMP received a formal warning.

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Telephone: +64 9 379 4556 Mobile: 021 404 306. Fax: +64 9 379 4557 Email: steve@dukesons.co.nz