New Zealand Law Society - Warning for PTMO Ltd over trademark approach

Warning for PTMO Ltd over trademark approach

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The Commerce Commission says it has given a warning to Gibraltar-based PTMO Ltd for a notice it sent to New Zealand trademark holders to pay $1,295 to renew their trademark for 10 years.

The Commission says its investigation has found that 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.

It says so far around 25 complainants have contacted the Commission with concerns about receiving the PTMO letter. A number of trademark holders paid the PTMO fee believing they were renewing their trademark directly with the Intellectual Property Office of New Zealand (IPONZ).

“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," says Commission General Manager Competition, Antonia Horrocks.

“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."

The Commission says in its 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."