In this age of celebrity endorsed products and lucrative licensing deals we are familiar with the rich and famous stamping their ‘identity’ into trademarks covering everything from perfume to pasta sauce and kitchenware to luxury watches. Lately however, this kind of intellectual property has taken a very royal turn and it seemed an opportune moment to highlight the importance of careful planning when it comes to registering trademarks.
The case of the trademark ‘SUSSEX ROYAL’, currently achieving global press attention is an interesting one that highlights the importance of the 6-month priority period in trademark applications.
When deciding on registering a trademark there are some fundamental rules that need to be considered from the outset.
Firstly, trademarks are territorial rights, so a UK trademark only covers the United Kingdom. If you want protection outside of the UK then you will need to file an overseas trademark application. The first filing of a trademark application generates a ‘priority date’, which is the date on which the first application was filed.
Provided applications for overseas trademark protection are filed within six months of the priority date then these foreign trademark applications can be backdated to the priority date.
Sussex Royal Trademarks in the UK
The Duke and Duchess of Sussex filed two UK trademark applications back in June 2019. These were for i) SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX; and ii) SUSSEX ROYAL.
Both trademark applications were filed on 21 June 2019 as word marks. Each application covered a range of goods in classes 16, 25, 35, 36, 41, 45, which included coverage of books, clothing, charitable services, education services, etc.
When these trademark applications were filed on 21 June 2019 this date became the priority date. The applicant then had until 21 December 2019 to file for any foreign trademark applications backdated to the priority date.
However, it was not until 1 January 2020 that the Duke and Duchess of Sussex filed their international trademark application at WIPO (World Intellectual Property Organization) for the mark SUSSEX ROYAL designating Australia, Canada, Europe and the US and covering goods and services from charity fundraising, social care services and education to stationery, and clothing. The application was filed too late to benefit from a priority claim.
Thus, there was a window of opportunity up until 31 December 2019 where any overseas applications for SUSSEX ROYAL might have been filed by anyone interested in using the mark.
Any such applications could have caused serious problems for the Duke and Duchess of Sussex in the US, Canada and Europe as it may be very difficult to prove that applications for the mark made at that stage were filed in bad faith.
This is because news of the brand was not revealed publicly until 8 January 2020 (although details of the UK trademarks were available on the UK trademark register).
Since Harry & Meghan’s brand name became public knowledge there have been a number of sightings of trademark applications for SUSSEX ROYAL in various territories.
Press coverage worldwide particularly highlighted the story of Los Angeles IP lawyer Jared Fogelson who claims he saw that the SUSSEX ROYAL trademark was still available in the US and was quick to file a US trademark application, hoping that it would teach the royal couple a lesson about intellectual property. He has since said he would happily gift the couple the trademark as he didn’t really have any use for it.
In Canada, on 12 January 2020, a drinks company Royalmount Spirits Inc. filed a trademark application SUSSEX ROYAL in classes that included clothing and alcoholic beverage. The word mark was also filed in Australia for clothing on 14 January 2020.
In the US two competing applications for SUSSEX ROYAL have been filed in class 24 for various household linen goods in the names of Carrie Devorah and Paul Scutt.
Another US application for SUSSEX ROYAL in the name of Alexander Fuller has been filed covering educational kits, ‘royal themed fashion items’ and alcoholic beverage.
What can Harry and Meghan do?
It will be interesting to see the outcome of the other applicants’ trademarks applications. The Duke and Duchess of Sussex may have grounds to attack these applications on the basis of their earlier trademark rights where the goods/services are identical/similar to those covered by their international application.
The Duke and Duchess of Sussex may also have grounds to attack any applications on grounds that the applications were filed in ‘bad faith’. However, bad faith can be difficult to prove and success is not guaranteed.
Had the Duke & Duchess of Sussex filed any international application (covering US, Canada and Europe) by 21 December 2019 then it could have been backdated to 21 June 2019 by claiming priority from their UK filings. This would have avoided possible conflicts with other marks filed before 1 January 2020.
Thus the main lesson to take away is that if you want to avoid the pitfalls of your trademark being registered overseas by third parties then it is wise to plan ahead and consider well in advance of the six-month priority deadline where you wish to seek protection for your trademark.
Will you get a pair of SUSSEX ROYAL socks for Christmas next year?
As a final sad note it seems that the mark SUSSEX ROYAL may not in future be used by the Duke & Duchess of Sussex as they have renounced use of their HRH titles.
Any UK trademark that contains the word ‘royal’ needs consent of the Queen or relevant member of the Royal Family to register the mark. It has been reported that the Duke & Duchess of Sussex have been instructed by aides of the palace to rebrand.
(Coincidentally an application for the mark ‘SUSSEX ROYAL’ filed in April 2019 by one John Burnett from Malta was refused by the UKIPO, presumably on these grounds.)
If the Duke & Duchess of Sussex refuse to rebrand then it is theoretically possible for the Crown to oppose registration of the marks.
Both of the UK trademark applications filed by the Duke and Duchess of Sussex were published for opposition on 20 December 2019, which means that up until 20 February 2020 anyone can oppose the applications or apply to extend the opposition period by a further month.
Will we see a trademark opposition case Windsor v Windsor? Probably not, as if the Duke and Duchess of Sussex are asked to rebrand it is more likely that the applications will be withdrawn resulting in the collapse of the related international applications, which are tied to the status of the UK registrations.
So in the end the mark SUSSEX ROYAL may never be put to proper use by Harry and Meghan and their applications may disappear. We shall watch with interest.