At the beginning of this year, Buckingham Palace came into the spotlight when the Duke and Duchess of Sussex announced their intention to become independent by moving away from the Royal Family and giving up the title of “Royal Highness”.
Their decision draws attention to their registered trademark “SUSSEX ROYAL”, which precisely refers to their affiliation to royalty.
On June 21, 2019, Meghan and Harry Windsor, through their foundation “Sussex Royal The Foundation Of The Duke and Duchess of Sussex”, filed an application to register the British trade mark “SUSSEX ROYAL” for various goods and services including clothing, charitable fundraising services, education and welfare services. They then applied, via a specific centralized filing, to protect the trademark in Australia, Canada, the European Union and the United States.
But doesn’t Meghan and Harry Windsor’s relinquishment of their royal title hinder the registration of the “Sussex Royal” trademark? Could it not potentially mislead the consumer as to the Sussex Royal family’s affiliation to the British Royal Family?
This media story presents a good case study in understanding the essential principles for securing trademark protection both domestically and internationally.
Choosing your Trademark
Before registering a trademark, it is necessary to ensure that the chosen sign fulfills certain requirements, including the legality of any sign that makes up the trademark. The trademark must not be contrary to public policy and accepted principles of morality, and it must not mislead the public as to the character of the product (for example, it must not give the impression that it is a state or official entity).
However, certain doubts had arisen as to the validity of the “SUSSEX ROYAL”.
These doubts stemmed from the provisions of the UK Trademarks Act 1994, which transposes the European Directive n° 89/104/EEC on the framework applicable to trademarks in the EU Member States into UK national law.
Among the applicable provisions are those pertaining to the emblems that are protected. These prohibit, under certain circumstances, the registration of trademarks containing the word “royal” on the grounds that this reference could give the impression that the applicant for the trademark had obtained prior approval from the Queen. As such, trademarks designating goods or services such as high-quality porcelain and glassware, alcoholic beverages, the organization of sporting events or charitable works would fall under this prohibition.
What about the trademark “SUSSEX ROYAL” since Meghan and Harry Windsor gave up their title of “Royal Highness”?
Some British lawyers had indicated that the couple should have no difficulty registering their trademark in the United Kingdom, as Harry remains a Prince and the couple are still part of the Royal Family.
Nevertheless, while Elizabeth II’s consent could have ultimately convinced the British Office to register the trademark “SUSSEX ROYAL”, the Queen is believed to have recently opposed the commercial use of the “royal” title by her grandson and his wife.
The question of the registration of the British trademark “SUSSEX ROYAL” is all the more important since the latter is based on a request to extend protection, via a centralized filing, in several territories abroad.
Extending the protection of a trademark in various international territories via a centralized filing
On December 20, 2019, an application to extend protection of the “SUSSEX ROYAL” trademark was filed in Australia, Canada, the European Union and the United States via a centralized filing with the World Intellectual Property Office (WIPO). If the application is filed centrally with a single office, this does not preclude examination of the application to protect the trademark in question by each of the national offices of the countries designated at the time of this centralized filing.
In addition to this procedure, which permits a reduction in filing fees, the optimal strategy, when possible, is to do so within 6 months following the filing of the so-called basic trademark. For Meghan and Harry Windsor, this is the British trademark “Sussex Royal” and to expressly claim the priority of the latter. Once they have been made on the basis of the first application, national extensions can then benefit from the earlier date of application for the basic trademark, which can prove to be very useful.
Within a week of Meghan and Harry Windsor announcing their departure for Canada and their interest in the U.S. market, at least six new applications for the “SUSSEX ROYAL” trademark were filed by third parties in the U.S. and Canada.
A Los Angeles intellectual property attorney, Jared Fogelson, is said to have registered the trademark in the United States to give Meghan and Harry Windsor “a (…) lesson in planning” how to protect their rights. However, he seems to have forgotten the priority rule.
If the latest information proves to be correct, the centralized filing made on the basis of the British trademark will be rejected by WIPO. As large sums of money have already been invested, it would still be possible to transform the centralized filing into several national filings, with each national trademark office involved, according to a specific procedure and the payment of new fees.
This news story is a good illustration of the specific characteristics of trademark law and the many nuances and procedures that a professional must be familiar with in order to best advise clients on strategy and how to optimize the chances of securing protection for their trademarks.
Moreover, what about the European Union trademarks containing the term “royal” after Brexit? To be continued in our next newsletter…