In brief 5 min read
The Sussex Royal trademark saga is a reminder that a proactive IP protection strategy is 'royally' important when seeking to launch and protect well-known brands.
- The Duke and Duchess of Sussex moved to protect, presumably with the intent of commercialising, their 'Sussex Royal' brand by filing trade mark applications. They have now announced they will be withdrawing those trade mark applications and dropping the word 'royal' from their Sussex Royal branding.
- The former royals' experience between the filing and withdrawal of their trade mark applications demonstrates that when (nearly) launching a high-profile brand, particularly where that brand is controversial or has some cultural significance, there may be a greater-than-expected number of oppositions and competing unauthorised trade mark registrations.
- If you intend to launch an international brand, create a comprehensive intellectual property strategy in advance to ensure you protect your brand against subsequent unauthorised trade mark registrations.
- Be aware when filing trade marks in the UK that 'threatened notices of opposition' are free and easy to file and may result in unexpected delays in your mark proceeding to registration.
- When filing across multiple jurisdictions that are subject to the Paris Convention, be sure to file your international trade mark application with WIPO within six months of filing your initial trade mark application in a contracting state.
The Duke and Duchess of Sussex announced their decision to step down as senior members of the royal family in January this year, but not before they filed two trademark applications in June 2019 for 'Sussex Royal' and 'Sussex Royal The Foundation of The Duke and Duchess of Sussex' in the United Kingdom Intellectual Property Office (UKIPO). These applications, published by UKIPO in December 2019, covered six classes and more than 100 goods and services, and indicated that the couple was intending to commercialise the Sussex Royal brand going forward. This would have been consistent with their use of those marks on social media since April 2019. The couple further indicated this intention – at least, in Australia, Canada, the US and the EU – by filing international trade mark applications for the same marks, on 31 December 2019 and 1 January 2020, with the World Intellectual Property Organization (WIPO) for those jurisdictions.
At the date of filing the trade mark with the UKIPO, the Duke and Duchess of Sussex were still using their 'Royal Highness' titles. However, in January 2020 Her Majesty announced that while the Duke and Duchess will remain a part of the royal family, they will no longer have the right to use their ‘Royal Highness’ titles and will no longer act as official representatives of the royal family. This may have impacted the success of the trade mark applications before UKIPO because the Trade Marks Act 1994 (UK) prevents applicants from incorporating the word 'ROYAL' into certain trademarks without the consent of the royal family.
...the Trade Marks Act 1994 (UK) prevents applicants from incorporating the word 'ROYAL' into certain trademarks without the consent of the royal family.
In this case, unfortunately, we won't get to find out. On 22 February 2020 the couple announced that they would withdraw their trade mark applications and refrain from using the word 'royal' in the 'Sussex Royal' branding going forward.
After the couple's high-profile announcement that they would step down from the royal family, and before they withdrew their trade mark applications, a number of notices of threatened opposition were filed with UKIPO (including a notice from an Australian doctor, which was later claimed to be the work of an imposter and was subsequently withdrawn). It should be noted that while such notices automatically extend the opposition period for the acceptance of a trade mark in the UK, these notices are free to file and do not oblige the filer to lodge a formal opposition. We won't find out what the basis of any formal oppositions may have been, but the large number of notices of threatened opposition, and the impact they had on the timetable for registering the trade marks, demonstrates that brand holders should expect challenges and delays when launching a high-profile brand, particularly where that brand has some cultural significance.
In addition to the couple's fight on the domestic front, a number of unauthorised trade mark applications for 'Sussex Royal' were made in jurisdictions around the world following the announcement they would step down from the royal family, including in the EU, Canada and the US. While, apparently prudently, the WIPO application predated these subsequent applications as it was made before the couple's announcement, they would still have had to go to the trouble and expense of opposing registrations in jurisdictions where they sought to rely on their Sussex Royal branding. In particular, this may have been difficult where the unauthorised application related to goods or services not covered by the WIPO application and where those applications were made in jurisdictions not covered by the WIPO application.
While a moot point now (though, we think, one worth remembering) the Duke and Duchess of Sussex could have improved their position by filing their WIPO application earlier. After filing their UK registration on 21 June 2019, the couple had six months to file their WIPO application to claim the 21 June 2019 filing date as their WIPO registration priority date. They missed that six-month deadline, filing their international registrations on 31 December 2019 and 1 January 2020. While this lapse did not result in an earlier registration by a third party, it was an unnecessary risk and serves as a lesson for those registering trade marks across multiple jurisdictions.