Unsolicited reminders about renewal of IP rights – is this the beginning of the end….?

In Priscilla Makovski’s previous article “unsolicited reminders about renewal of IP rights” , we cautioned how we had become aware of organisations which were sending out unsolicited reminders about the renewal of IP rights. 

One such company issuing these reminders was Trademark Renewal Service Ltd (TRS).  TRS sent a reminder to NBC Bird & Pest Solutions Ltd who decided enough was enough.  NBC Bird & Pest Solutions Ltd complained to the Advertising Standards Authority (ASA) about the reminder they had received from TRS on the basis that the mailing was misleading because it was not clear it had been sent by a private company with no affiliation to the UK Intellectual Property Office (UK IPO).

The ASA upheld the complaint and ruled that the correspondence from TRS must not appear again in its current form. 

In particular, the ASA noted that as the reminder displayed a barcode and extensive details as to the trade mark in question, the correspondence gave the immediate impression of an official document created by the body responsible for registering trade marks in the UK. 

This was made worse by the text on the reminder which 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”.  The ASA noted that this text was very prominent in the mailing but did not clearly explain the status of TRS as a private company or the nature of the service offered.

Interestingly, the ASA’s decision did note that some parts of the TRS reminder did actually elaborate on the nature of the service offered and the lack of affiliation with the UK IPO.  Whilst those statements were not sufficient to counteract the fact that the correspondence was misleading, it will be interesting to see if the TRS continue to send out unsolicited correspondence, albeit an amended version thereof to avoid falling foul of the ASA’s advertising practice.

The ASA’s decision reaffirms our advice in that if you receive an unsolicited reminder, we suggest that you are cautious, and check it out with us. Your usual contact will be happy to advise you in relation to anything you are doubtful about.

It is also possible to check on various official websites to see if it is a known problem.  The UK IPO has a warning page which gives information on what to look out for.  Similar pages can be found on the website of the World Intellectual Property Organisation and on the OHIM website in respect of trademarks and designs.  You can also visit the websites of the Institute of Trade Mark Attorneys (ITMA) and the Chartered Institute of Patent Attorneys (CIPA).