A number of trademark owners in Australia, particularly those in the high profile travel and tourism sector, have recently received an official looking letter from PTMO (Patent & Trademark Organisation) advising that their trademark is expiring and the steps that need to be taken to renew it.
Trademarks, or brands, are used to uniquely identify your goods and services from those supplied by others. IP Australia administers intellectual property relating to trademarks and patents in Australia. The process of registering or renewing a trademark is either done directly with IP Australia or through an intermediary that you can pay extra to do the work for you, which is typically a legal firm.
The letters that are currently being sent out by PTMO are unsolicited requests to renew your trademark at a significant extra cost. IP Australia charges $400 for a single class trademark renewal, while PTMO charge more than 3 times that amount – $1,395.
Upon receiving one of these trademark renewal notices, many people may assume this is the official process that must be undertaken to renew their trademark. Trademark renewals occur every 10 years, so it is an extremely infrequent process. After 10 years, recipients of those renewals from PTMO may have little recollection of the process they undertook 10 years ago.
Below is a copy of an invoice from PTMO – Patent & Trademark Organisation, with the personal details of the business that sent it to us blanked out to protect their privacy.
There are a number of distinguishing features of this renewal notice.
- The letter is sent from an address in Canberra, the capital of Australia, which some people may interpret as thus originating from a federal government organisation.
- The letter is written in American English, rather than Australian English, thus some words are not spelt correctly. This is not something you would expect from an Australian government organisation.
- A strong warning that “if not renewed, your trademark will expire“, thus implying a sense of urgency in dealing with this renewal letter.
- An easy way of commencing the renewal process – simply date and sign the letter, and return it in the pre-paid envelope enclosed.
In order make the expensive renewal process through this third party legal, there is small print buried on the letter which says:
- PTMO Limited is not associated with the official IP Australian office.
- PTMO Limited is an independent renewal processing company.
- This is is an optional offer.
- This is not an invoice or bill.
- You can also contact your legal representative to perform the renewal for you.
The trademark renewal notice has their phone number listed as (02) 6140 3414 and their address listed as:
Patent and Trademark Organisation 2 Endeavour House Captain Cook Crescent Griffith ACT 2603
On the return pre-paid envelope is this address:
PTMO Ltd Renewals Department Reply Paid 83277 Griffith ACT 2603
In the small print on the back of the renewal notice, their address is listed as:
PTMO Ltd 5 Secretary's Lane PO Box 931 Gibraltar GX11 1AA Gibraltar
IP Australia is aware of many types of unsolicited renewal offers sent to trademark owners. See their dedicated page on unsolicited invoices.
If you have inadvertently signed up to allow PTMO to renew your trademark, thinking you were dealing with IP Australia, you are encouraged report it via the ACCC’s ScamWatch page.
Update for May 2017
If you don’t authorise PTMO (Patent & Trademark Organisation) to renew your trademark, you may receive a follow-up a letter a few months later from them with “reminder” in big letters at the top, and a further warning that “your trademark is about to expire”. Refer to the example below:
Note that PTMO, who wants to be trusted with the very important task of renewing a trademark at a premium cost, are happy to send a letter out which features a spelling mistake – refer to the heading on the first column of the second table.
The urgency of this trademark expiry is curious, given that the reminder is sent out a year and a half before the actual expiry date. In reality, they want you to renew your registration with them before IP Australia sends out an official renewal notice.
Anyone receiving this reminder notice will be surprised to see that the original renewal fee of $1,395 for one class has been reduced to $1,285. However, the fee for additional classes has risen from $485 to $550 each. Keep in mind that renewing your trademark online directly with IP Australia will cost just $400 for one class, which is $885 cheaper than letting PTMO do it for you.
Strangely, the renewal reminder from PTMO is sent from a completely different address than the original renewal. The original trademark renewal offer was sent from Canberra, but this reminder letter comes from a Sydney address, with a Melbourne address listed on the reply-paid envelope which is really odd. To further add to this tangled web, the Canberra phone number on the original renewal letter has been replaced by a Brisbane number of (07) 3067 8915 plus a Melbourne FAX number of (03) 9923 6363. How confusing is that!
Patent and Trademark Organisation Pty Ltd Level 17 9 Castlereagh Street Sydney NSW 2000
On the return pre-paid envelope is this address:
Trademark Service Reply Paid 88875 Melbourne VIC 3000
This delivery address is also listed on the return pre-paid envelope:
585 Little Collins Street Melbourne VIC 3000
So with the pricing on the reminder notice all over the place compared to the original letter from PTMO, and a confusing mix of Sydney and Melbourne addresses replacing the Canberra address, plus a contact phone number that has changed from Canberra to Brisbane, all this really doesn’t inspire any confidence in this organisation or its stability.
Our advice – treat any correspondence from Patent & Trademark Organisation Pty Ltd with caution and seek legal advice if you need help. For any general questions about trademarks in Australia, IP Australia (see www.ipaustralia.gov.au) should be your first port of call, as PTMO is not Australia’s official intellectual property agency.