New Zealand is leading the way in ongoing battle against trade
New Zealand's Commerce Commission has been successful in
taking action against TM Publisher, one of the many trade mark
solicitation scammers that trick trade mark owners into paying for
unnecessary or non-existent services.
TM Publisher, a Swiss-based company, has reportedly reached an
interim agreement with the Commerce Commission to refund around
NZ$600,000 (AU$580,000) to over 280 trade mark owners who had
received and paid unsolicited invoices.
The unsolicited invoices requested payment of NZ$1,638 for
publication of a trade mark in the 'IDRTM Register'. The
'IDRTM Register' has no association with the Intellectual
Property Office of New Zealand (known as IPONZ) and the services
offered did not affect the official trade mark registration or
trade mark rights in New Zealand or any other jurisdiction. An
example of TM Publisher's invoice can be viewed
New Zealand's Commerce Commission alleged that TM
Publisher's invoice misled the recipient by not making clear
that the recipient had no obligation to pay for the services
offered, likely breaching New Zealand's Fair Trading
An unsolicited invoice requesting payment to an overseas bank
account should trigger warning signs of a scam. However, in this
case TM Publisher's invoice contained a New Zealand address and
bank account details, which may have caused recipients to consider
the invoice legitimate. When TM Publisher's bank account was
frozen in March 2016, it contained more than NZ$200,000 from New
What does this mean for Australia?
Following the recent success in New Zealand against TM
Publisher, now may be an opportune time for Australian authorities
to consider adopting a more proactive approach in dealing with
these types of trade mark scams.
We frequently see scams like this targeting Australian trade
mark owners and we
regularly remind our clients to be vigilant in questioning of
unsolicited correspondence or invoices requesting payment. However,
with increasing time pressures it can be easy to be fooled.
If in doubt, we encourage clients to seek advice about the
legitimacy of correspondence about their trade marks.
IP Australia's website also helpfully provides an indication
of some of the companies known to send unsolicited invoices which
can be found
While the investment in trade mark registration remains an
essential and important step in securing brand protection, trade
mark owners should take caution to avoid being caught out by trade
This article is intended to provide commentary and general
information. It should not be relied upon as legal advice. Formal
legal advice should be sought in particular transactions or on
matters of interest arising from this article. Authors listed may
not be admitted in all states and territories
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