In March this year, New Zealand’s Commerce Commission was made aware of a trade mark scam involving third party organisation IDRTM (TM Publisher), representing itself as an official trade mark publication organisation.

The scam involved invoices being issued to trade mark owners for payment of more than NZ$1,600 for a web-based registration and publication service. More than 280 trade mark owners paid the TM Publishing invoice between 10 March 2016 and 9 May 2016.

The Commerce Commission has subsequently been working with ANZ Bank to reverse the payments made and refund the trade mark owners who were misled into paying the invoices issued by TM Publisher. Around $600,000 has since been returned to approximately 110 trade mark owners. TM Publishing has also agreed to refund further payments upon request by the trade mark owner.

Following an investigation, the Commerce Commission found the organisation was likely to have breached of the Fair Trading Act 1986 for misleading trade mark holders into thinking they were obliged to pay the invoice to ensure trade mark protection.

The Commerce Commission has issued a formal warning to TM Publisher and stated they may consider seeking Court assistance to prevent harm to businesses or individual consumers from similar scams in the future.

We would like to remind clients that it is not uncommon for third party scammers to contact trade mark applicants directly, posing as legitimate ‘publication’ or ‘government’ organisations. They get trade mark applicants’ contact details from the official trade mark database, bypassing their legal representatives. In many cases these scammers make requests for payments that are not legitimate.