Harry and Meghan have had the spotlight of the world’s media on them in the last few weeks. But for us, it is great to see the level of interest that has been paid to their trade mark applications. It’s not just the IP blogs and trade journals that have been commenting on their efforts to secure legal protection for their brand – the SUSSEX ROYAL trade mark has been making headlines across the mainstream press as well, which is not surprising given the challenges ahead for the Sussexes’ applications.
In June 2019, Harry and Meghan announced the creation of their new charity: the Sussex Royal Foundation, which is due to launch in April 2020. The Sussex Royal Instagram account has since amassed some 11 million followers. The couple count the Obamas and Oprah Winfrey as mentors, and many of their high-profile celebrity friends have been vocal in their support for the couple’s recent announcement. Back in November 2017 we wrote about how Meghan’s marriage to Harry would boost the brand value of the British monarchy, and by all accounts the Duke and Duchess of Sussex have become a global super-brand in their own right.
Around the time the Sussexes announced they would be launching their own foundation, their team filed UK trade mark applications for the marks SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX. These UK applications were then used as a basis for two International Registrations designating Australia, Canada, the EU and the USA. The International Registrations are currently pending examination at the World Intellectual Property Organisation, after which they will be examined by the Trade Mark Office of each designated country.
Harry and Meghan will have to fight for their rights
After a longer than usual examination, the UK applications have been accepted, published and are open to oppositions from third parties. A total of thirteen Notices of Threatened Opposition have already been filed against the SUSSEX ROYAL mark, and three against their second mark; these allow the potential opponents one extra month each to file an opposition against the respective applications. If any of these oppositions are filed, the registration will be delayed until a final decision has been taken in each of them. If any of the oppositions are successful and the Sussexes’ UK application is rejected, the International Application that has been based on it will fall away.
In addition to the oppositions that they may have to defend in the UK, the Sussexes will also need to take action against the numerous applications that third parties have begun filing for the SUSSEX ROYAL mark in countries around the world.
The fact that squatters have targeted their mark is not a surprise considering the value of their brand and the immense amount of media attention its owners have received in recent weeks. Even before the Sussexes’ own application was on file there was an attempt to squat on the SUSSEX ROYAL mark in the UK. According to the Guardian, a UK application was filed one month before the Sussexes by an individual from Malta named John Burnett. Fortunately for the Sussexes this application was rejected by the trade mark examiner, most likely under Section 4(1)(d) of the Trade Mark Act 1994, which bars from registration any mark that misrepresents the patronage or authorisation of the Royal family.
Since the beginning of January 2020, at least twenty-two applications for variants on the SUSSEX ROYAL trade mark have been filed by various companies and individuals around the world.
In Europe, the Sussexes have to contend with one EU application for an identical word mark, filed by an Italian individual named Ui Phoenix Kerbl, two Italian applications for the words SUSSEX ROYAL underneath a three pointed crown logo, two Spanish applications, also for the words combined with a crown, and further German and Romanian applications, both for the identical words SUSSEX ROYAL.
The Sussexes do have earlier rights than these applications because their International Application was filed within six months of their initial UK application. This allowed them to claim ‘priority’ and backdate their protection in the countries designated under their International Application to the filing date of the UK application.
The Sussexes application covers goods in Class 16 (publications) and Class 25 (clothing) as well as services in Class 35(campaign projects), Class 36 (charity services), Class 41 (education) and Class 45 (social care).
While some of the later applications cover these same goods and services, or ones similar to them, the majority of the applications also cover a number of goods and services that are entirely different. This is where the Sussexes will face a challenge.
It is likely that they will argue that these later applications will cause confusion on the marketplace and will also take advantage of, or damage, their mark’s reputation. Even though the Sussex Royal Foundation has not commenced trading yet, it may still be possible to prove that the SUSSSEX ROYAL mark has a reputation in relation to some of the goods and services covered by their application. Relying on the enhanced protection afforded to a mark with a reputation could allow them to take action against an application for goods and services which are dissimilar to their own.
In the US, the first of the SUSSEX ROYAL applications was filed by a trade mark lawyer named Joel Fogelson from Los Angeles. According to US tabloid news website TMZ, his motivation in filing for the Sussexes mark was to teach them a lesson about planning ahead after he found out (to his shock) that they had not yet filed a US application. Perhaps he should have checked the International Register first for pending US designations before making this statement, because the Sussexes International Application was filed a week before his own, and once granted will be able to backdate legal protection in the US to June 2019.
Joel Fogelson is reported to be happy to transfer ownership of his US application to the Sussexes for free. However, the publicity that Joel Fogelson’s application quickly received seems to have inspired five further US applications – and so it looks like the Sussexes will have a few US oppositions on their hands after all. They may also need to oppose the two Canadian applications, one of which appears to have been filed by an undergraduate student studying marketing at Concordia University in Montreal.
The state of affairs in Argentina, New Zealand and Switzerland will perhaps be the most challenging because the Sussexes do not own any registrations or pending applications, as far as we can see. They will have to seek local advice on their options for addressing these instances of trade mark squatting.
Ultimately, it looks as if the Sussexes will struggle to completely clear the registers of identical marks by relying on their IP rights alone. However, they may find that the owners of these speculative applications are willing to part with them for cash (because there is little doubt that this was the intention behind some of these filings).
One thing for sure, their trade mark counsel are going to be very busy.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.