Gibraltar-based company PTMO Limited (PTMO) has received a Commission warning for a notice it sent to New Zealand trademark holders to pay $1,295 to renew their trademark for 10 years.

The Commission investigation found PTMO was likely to breach the Fair Trading Act 1986 by giving trademark holders the misleading impression that:

  • PTMO is a New Zealand based organisation which is affiliated with the official trademark body, the Intellectual Property Office of New Zealand (IPONZ)
  • Payment of the $1,295 renewal fee (and an additional class for $650) is required in order to maintain or renew their trademarks
  •  Trademark holders are under an obligation to pay PTMO for those services.

So far, around 25 complainants have contacted the Commission with concerns about receiving the PTMO letter. The Commission spoke to a number of trademark holders who paid the PTMO fee believing they were renewing the trademark directly with IPONZ.

General Manager Competition, Antonia Horrocks, says the PTMO case highlights how important it is to always read the small print before you make a payment or sign up for something.

“We believe complainants were given the misleading impression that PTMO was connected with IPONZ. PTMO disclosed it was not associated with the official New Zealand Intellectual Property Office but it was in small print, amongst other information, and not sufficiently prominent.”

“Our view is that the notice gave the overall impression that PTMO was a New Zealand based company and that trademark holders were obligated to pay it for their trademark renewals when they were not,” she said.

In the Commission’s view, the misleading impression given by the notice resulted from the use of: reminder-style prompts, New Zealand contact details, a domain name commonly used by non-profit organisations, prominent references to trademark expiration dates and a graphic of the recipient’s trademark, taken from the IPONZ website. The letter also had a prominent description of the process the trademark holder should follow to renew the trademark.

In its defence, PTMO said there was no intention to mislead trademark holders and that its renewal of trademarks was a genuine service it offered to New Zealand businesses. It said that full information about the service it provided was contained in the notice. PTMO also said that it was working on changes to improve the clarity of its notices and did not intend to send anymore notices to trade mark holders until its notices had been revised.

Ms Horrocks said that unfortunately New Zealand trademark holders have been targeted previously by other organisations with requests for payments.

“We were really pleased to work with ANZ bank to return $600,000 to New Zealand trademark holders earlier this year after they were misled about the need to pay an invoice from Swiss company TM Publisher.”

“In this case we decided that a warning to PTMO is appropriate but we advise trademark holders to be vigilant with mail they receive about their trademarks. Thoroughly read the fine print, make sure you know who the mail is from and exactly what you are paying for,” she said.

Background

PTMO charge a $1,295 fee to renew a trademark for 10 years for one ‘class’. Each additional class required an additional a fee of $650. In contrast, the Intellectual Property Office of New Zealand (IPONZ) charges a $350 renewal fee per class (excluding GST). The ‘class’ is the term for the category of good or service the trademark is for.

Around 18 trademarks (with renewal fees totalling over $23,000) have been renewed by PTMO through IPONZ to date. The warning letter the Commission sent to PTMO can be found on the Enforcement Response Register.