Update: The Sussex Royal trade mark

Update: 25 February 2020

Since posting our earlier blog (see below) on the issues surrounding the trade mark application for SUSSEX ROYAL, Her Majesty The Queen has refused to let the Duke and Duchess of Sussex use the word ‘Royal’ to promote their brand. As a result, the UK trade mark application has today been officially withdrawn. We expect the international application to also be withdrawn since this was based on the UK registration.

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With so much speculation surrounding the Duke and Duchess of Sussex’s trade mark application for SUSSEX ROYAL, the specialist patent and trade mark attorneys at Serjeants provide an update on what we know so far and take a closer look at some of the issues that the royal couple are facing.

Background

Sussex RoyalOn 20 June 2019 two of Harry and Meghan’s advisors filed two UK trade mark applications for SUSSEX ROYAL. Prior to this Harry and Meghan’s charitable work was carried out in conjunction with William and Kate using the trade mark the ROYAL FOUNDATION. The UK trade mark applications were possibly filed in the name of advisors to keep the applications under the radar and because the Sussex Royal Foundation had not yet been formally set up. In early December, the application was assigned from the Sussex’s advisors to the Sussex Royal Foundation.

In order to protect the SUSSEX ROYAL trade mark outside of the UK, two international trade mark applications were filed on 20 December 2019. The international trade mark applications designate the EU, the US, Canada, and Australia. They claim priority from and are based on the UK trade mark applications. This means that if the UK application is granted and the international trade mark application is accepted, the international trade mark application will be treated as if it was filed on 20 June 2019.

This all seems like a perfectly reasonable strategy to protect Harry and Meghan’s foundation in its key countries. However, this may not all be plain sailing.

Opposition at home

Their international trade mark applications are based on their UK trade mark applications. This means that if the UK trade mark application is not registered or is cancelled in the first five years, then the international mark will also be cancelled in all of the countries that it covers. This is particularly important as the UK trade mark application – although accepted by the UKIPO – is still open to opposition.

As of 3 February 2020, 12 separate parties have filed to extend the opposition period, allowing them to formally oppose the application. The opposition is open to further parties’ requests to extend the opposition period until 20 February 2020. If any single opposition is successful, then the application will be refused.

At the present stage, we do not know the basis of the oppositions. This will only become clear if and when full oppositions are filed. The deadline for filing a full opposition is 20 March 2020. Whilst at least some of the oppositions are likely to be spurious, one or more of the oppositions may be more serious, for example if an opponent has an earlier similar trade mark registration. However, even if the oppositions are unsuccessful, they will still delay the registration of the SUSSEX ROYAL trade mark in the UK.

Issues abroad

Outside of the UK, various opportunistic third parties attempted to take advantage of Harry and Meghan’s January announcement that they were stepping down from royal duties to file local trade mark applications for SUSSEX ROYAL in the US, EU, and Australia, amongst other countries.

In the US a local attorney, Jared Fogelson, filed a US trade mark application for SUSSEX ROYAL to “teach Harry and Meghan a lesson about intellectual property” because he thought they hadn’t applied for the trade mark in the US. However, this attorney has in fact been taught a lesson by Harry and Meghan. As the royals filed an international trade mark application covering the US in December, they have the earlier application that will take precedence over Mr Fogelson’s application.

Further, public statements from Mr Fogelson indicate that his application is not in good faith and he has no real intention to use it. This makes it unlikely that his application will be granted or, at the very least, leaves it open to challenge from third parties.

Moving forwards

Providing the challenges to the UK application can be overcome, the opportunistic third party applications for SUSSEX ROYAL will all be open to challenge by Harry and Meghan on the basis of their international application. Even if their UK and international applications fail, Harry and Meghan could still challenge most of the third party applications on the basis that they have been filed in bad faith to “steal” their brand.

Their international application will also be open to challenge by third parties in each of the US, Canada, Australia, and the EU. If the UK application is anything to go by, there may be several challenges in each of these jurisdictions.

What should have been a simple procedure to protect Harry and Meghan’s brand in the UK and in other countries has been significantly complicated by their fame and by bad faith actions of third parties.

Contact Serjeants for advice

If you’d like further information on filing UK and international trade mark applications, please call 0116 233 2626 to speak with one of our expert trade mark attorneys. Alternatively, send us an email here.