We Need to Talk About Harry and Meghan
Actualizado: 31 mar 2020
Is this shameless click-bait? Of course it is. But it's also an important intellectual property matter worthy of professional comment - and we are happy to oblige.
Prince Harry and his wife Meghan Markle unilaterally announced some time ago that they were resigning from being full-time members of the British Royal Family. One of the many consequences of such move is that they will now be able to participate in private business and trade. And one of the first thing any commoner needs in trade is a trademark.
Indeed in June 2019 the couple applied through their foundation for the word mark “Sussex Royal” (referring to the Duchy of Sussex, granted to both by the Queen) in classes 16, 25, 35, 36, 41, 45. These classes cover all sorts of products and gives a hint of what their business intentions might be: from clothing, to notebooks, to fundraising services. Surprisingly for what appears to be a well-advised power couple, they only applied for such trademark in the UK, and it was not apparent they had made arrangements for international registrations within six months of their first filing, as it is usually expected.
Trademarks are strictly territorial and function in most countries on a "first come, first served" basis, which lets the door open for multiple bad-faith registrations elsewhere. Not surprisingly, applications for "Sussex Royal" emerged at the European Union Intellectual Property Office (EUIPO), in the United States and in Canada, all made by individuals unrelated to the couple.
There are two angles to the story that are of interest from the legal side. First, this is a cautionary tale about planning your trademark portfolio. Applying for a trademark is relatively cheap and easy, while trying to cancel somebody else's is expensive and hard. So, while it's likely that Harry and Meghan would be able successfully fight and reclaim all these bad-faith trademark applications, they would need to engage lawyers in lengthy and costly actions. Our advice is to always seek trademark registrations as soon as possible and in every country where one is likely to operate.
But there is another important issue that has finally doomed their intentions: can the use the term "royal" at will? Trademark law usually bans official symbols, such as flags or coats of arms, from being trademarked. This provision is included in the Paris Convention so its exists almost everywhere in the world.
The UK Trade Marks Act in particular states that "a trade mark which consists of or contains - (...) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation (...) shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty." This also includes the word "royal" as found on "Sussex Royal". While they don't seem to have applied for their logo, if they do they would arguably also require the permission of the Queen because of the inclusion of a Royal crown.
The Queen has allegedly opposed the usage of "royal" for their commercial endevours so, even if her jurisdiction covers only the UK, for the sake of consistency the couple will most likely seek a new trademark in the near future.
This matter can draw important lessons for other enterprises too. First being, it's important to plan ahead on international expansion and manage the trademark portfolio accordingly; secondly, before filing for a trademark, all business units (marketing, legal, exports...) must be aligned on what we want and can do. The opposite results in withdrawn trademarks and a waste of time and resources.
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