03 February 2020

The Sussex Royal Brand – A Right Royal Mess?

The Duke and Duchess of Sussex’s decision to step back from royal duties raises uncertainty not only about their role going forward, but also about the future of their Sussex Royal brand, and associated trade mark applications featuring Sussex Royal.

Although some questioned the suitability of Sussex Royal as a brand from the outset, Harry and Meghan clearly envisaged that it would play an important role in their charitable and promotional activities. Since April 2019, it has featured as the username for their Instagram account and formed part of their website address. It is also included in the name of their still yet to be launched charitable foundation. In June 2019, UK trade mark applications were filed for SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX. These applications are currently owned by Sussex Royal The Foundation of The Duke and Duchess of Sussex (“the Foundation”).

Doubt has been cast on whether Harry and Meghan will be permitted to continue using a brand featuring the word ROYAL under the terms of their deal negotiated with Queen, or whether the public will still be accepting of such a brand. But what about the trade mark issues?

SUSSEX ROYAL TRADE MARK ISSUES

Harry and Meghan’s impending change of status also raises potential issues from a trade mark standpoint, for example, whether or not they can be blocked from securing UK registrations featuring ROYAL under the terms of the UK Trade Marks Act 1994.

Furthermore, mass media coverage in the last few weeks concerning Harry and Meghan (and their trade mark applications) appears to have encouraged certain individuals to seek trade mark protection for SUSSEX ROYAL in various territories throughout the world, or to consider challenging the two UK trade mark applications by way of an opposition.

What seems an unusually high number of notices of threatened opposition have been filed against the UK application for SUSSEX ROYAL in particular. For parties filing such a notice, the opposition deadline is extended by one month from 20 February to 20 March 2020.

Whilst this is a simple step that can be completed on-line, filing a formal opposition requires a completely different level of commitment, including filing formal grounds of opposition and paying a fee, as well as filing evidence/arguments and possibly attending a hearing, if the opposition progresses. The process can be hard to navigate without the advice of an attorney and also exposes an unsuccessful party to liability for costs. It remains to be seen how many of the parties, who indicated an intention to oppose, will actually do so.

The UK Trade Marks Act 1994 contains provisions which are designed to prevent the registration Royal marks including Royal arms, armorial bearings, crowns, flags, or images of members of the royal family. Any “words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation” can also be prevented from registration although an objection on this basis can be overcome with the consent of the Queen or the relevant member of the Royal family.

One would imagine that these provisions were designed to prevent persons outside the royal family registering marks which convey the impression of a Royal association, rather than members of the royal family themselves, however semi-detached.

There has been speculation as to whether the later provision could be relied upon by, say, disgruntled third parties, to block registration of both SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX now or in the coming months. However, this seems unlikely as even after they cease to be working royals or represent the Queen in the Spring of this year, The Duke and Duchess of Sussex will still remain members of the Royal family, will retain their private patronages, and will have only recently relinquished patronages bestowed on them by the Queen. There is also the possibility that The Duke and Duchess of Sussex would be able to consent to the registrations.

The likelihood of Harry and Meghan persisting with the applications in the face of objection from the Queen seems remote. In practice, whether or not they continue to retain an interest in the marks may well come down to the terms of any agreement struck with Queen and other senior members of the royal family.

INTERNATIONAL SUSSEX ROYAL TRADE MARKS

In addition to filing UK applications, the Foundation is also currently seeking protection for the marks SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX by way of International applications designating the EU, Australia, Canada and the US. The number of countries in which overseas protection has been sought is perhaps surprisingly small given Harry and Meghan’s global reach, and the risk of third parties seeking to register their marks.

The international applications were filed shortly before Harry and Meghan made clear their intention to cease to be “senior” royals or the Queen’s decision to enforce a hard “Megxit”. So, we cannot necessarily conclude from these filings whether or not they will continue to use the SUSSEX ROYAL brand in the longer term as a central element of their branding strategy, or indeed at all.

As mentioned above, the considerable recent publicity surrounding Harry and Meghan appears to have precipitated applications for SUSSEX ROYAL marks in various territories, including the EU, US, Canada, Australia, Switzerland and New Zealand. The Foundation’s international applications covering the EU, US, Canada and Australia would seem to pre-date the third party filings in those territories. However, information currently available on publicly accessible databases suggests that the Foundation has not sought protection for their marks in Switzerland and New Zealand.

In many territories, mechanisms exist, for example, to allow proprietors of unregistered but well-known marks to block registrations by third parties, or to prevent the registration of applications filed in bad faith. Given Harry and Meghan’s global following, it may be that they would be able to rely on such provisions to block third party applications in territories where they do not have earlier applications on file. However, as many global brand owners have found out to their cost in the past, these processes can be costly, time-consuming, and not always guaranteed of success, however self-evidently famous they or their trade marks may appear to be.

It will be interesting to observe whether or not Harry and Meghan are forced to drop the SUSSEX ROYAL brand, and if so, what decisions they make regarding their brand strategy going forward. Will they, for example, focus their branding around the “The Duke and Duchess of Sussex” with, say, “The Foundation of the Duke and Duchess of Sussex” as a sub-brand, or will they look to come up with a new brand as a replacement for Sussex Royal?

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