Trade marks: Battle to be be number one
A business specialising in trade mark advice and registration must stop claiming to be the “UK’s no.1 trade mark service”, the Advertising Standards Authority (ASA) has ruled.
The ASA said Trade Mark Direct (TMD) made the claim on the basis that it believed it had registered more applications than any other firm in the last three years.
Stobbs IP, a Cambridge-based trade mark consultancy, complained, arguing that TMD had registered “fewer trade marks than some competitor firms”.
The ASA has now banned TMD from using the phrases “UK’s No.1 Trade Mark Service”, “the UK’s leading trade mark advice and registration company” and “The no.1 firm in the UK” without rigorous evidence.
TMD responded to the complaint by arguing some rankings of registrations, such as from the Chartered Institute of Trade Mark Attorneys (CITMA), did not put it top because they “relied on all companies providing their own name under a section of the application documents called ‘address for service’.”
TMD said it only filled in this part of the form “on a small portion of filings, where it was absolutely necessary”, regarding this data as a “proxy” for trade mark activity used by third parties to estimate how many registrations they had filed.
Instead, TMD argued that, based on its own analysis of both the CITMA report and data from the UK Intellectual Property Office, it had filed more trade marks than any other firm between 2011 and 2016.
The ASA said that TMD provided its own list of trade marks it filed last year to demonstrate that it had registered the most. This was based on the assumption that their competitors always put their name on the application form under “address for service”.
TMD also provided web traffic data showing that the Google adverts from its nearest competitors received less than 50% impressions, and argued that “it could be deduced from the difference between the popularity of their website and their competitors that they had sold more trade marks than those competitors”.
It also suggested that, if another firm was consistently filing more, then it wodl probably have made the claim to be the market leader. “As another firm had not made a claim on that basis, then it was unlikely that any other firm was filing more trade marks.”
However, upholding the complaint, the ASA accepted that while it was likely to be common that firms put their names under ‘address for service’, it had not seen any evidence to prove that the entire market followed this practice.
The watchdog noted that there were “a number of similar online-only trade mark registration companies on the CITMA list”, which potentially could do the same as TMD, meaning that the CITMA list and TMD’s own data “was not sufficient itself” to substantiate the claim that it the leading service.
The ASA acknowledged that TMD’s website “appeared to receive more visitors than two of their closest competitors and had generally more direct traffic and generally higher average visit duration”.
But this difference “was not so great that we could infer from web traffic data that Trade Mark Direct had registered more trade marks”, nor did TMD provide comparative web-traffic data for every online service.
“Because the evidence provided by Trade Mark Direct was not adequate to substantiate the claim that they had registered the most trade marks in the UK, we concluded that the ad was misleading.”
The watchdog concluded that the advert must not appear again in its current form, and TMD could not make its claims “unless they held evidence that they had registered more trade marks than any other business”.
TMD’s website now describes it as “The UK’s favourite trade mark firm”.
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