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Wednesday, May 11, 2016

New Zealand's ComCom slams the spam

By Lena Balakrishnan, Associate and trade marks attorney

Back in 2014 we reported the on-going problem with trade mark owners and domain name holders receiving unsolicited notices from entities offering trade mark publication, renewal and registration services.  These notices typically are in the form of an invoice charging the owner or applicant of a trade mark or domain name for services relating to the registration, publication, renewal or monitoring of their mark, even though the trade mark applicant or owner has never agreed to buy or engage these services.

Both IP Australia and IPONZ have published warnings about these notices.

One of the companies that is renowned for issuing these unsolicited letters to New Zealand trade mark holders is TM Publisher. TM Publisher's invoices were generally for the amount of $1,638 and related to an overseas trade mark registration service.

In March this year, the New Zealand Commerce Commission (ComCom) started investigating TM Publisher, and on 14 April 2016 issued a press release warning people not to pay any invoices they may receive from TM Publisher.  ComCom also obtained an order to freeze TM Publisher's bank account while it reached a decision as to how to deal with the $200,000 TM Publisher had already received into its New Zealand based bank account.  ComCom was able to investigate and take action against TM Publisher on the basis that TM Publisher's letters misled businesses (and individuals) into thinking that they are obliged to pay for a service that they have not agreed to.

On 2 May 2016, ComCom issued a further press release announcing that it had reached an interim agreement with TM Publisher.  Under court enforceable undertakings, TM Publisher agreed to directly refund anyone who had paid them after 6 April 2016.  ComCom is still in negotiations with TM Publisher about payments it received before 6 April 2016, but this agreement is a positive step. View the Commerce Commission’s media release.

As far as we are aware, Australia's ACCC does not appear to be conducting similar investigations, however this is something it may consider following ComCom's success across the ditch.

If you have received an invoices from TM Publisher, or which you think could be 'spam' please send these to us and we can assist you in obtaining a refund (if it relates to a New Zealand trade mark matter) or confirm the legitimacy of the invoice.

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