Australia: Trade mark scammers caught out in New Zealand

New Zealand is leading the way in ongoing battle against trade mark scammers

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 here.

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 Act 1986.

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 Zealand businesses.

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 here.

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 mark scams.

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