The Duke and Duchess’ trade marks – cutting through media hype

Posted on: February 5th, 2020

Millions of trade marks are applied for worldwide each year for brand protection, and recent reports in the media have cast a light on applications made by the Duke and Duchess of Sussex. This has attracted interest over plans to commercialise their brand while stepping back from being senior royals. Based on the information available at the trade mark registries and our experience in trade marks, we look at the steps followed in registering the Sussexes’ marks.

The Sussexes are directors and guarantors of a company called “Sussex Royal The Foundation Of The Duke And Duchess Of Sussex”. This company is listed as the owner of the applications to register “Sussex Royal” and the company name itself as trade marks in the UK. The applications were made in June 2019 and used to support international applications to register the marks in Australia, Canada, the EU and the US over the New Year. These international applications will be assessed by the domestic intellectual property offices under local law.

The media has reported on various filings around the world and exaggerated their effects and importance, often being mistaken or using misleading language in the pursuit of sensationalism.

At the time of writing, there are fifteen applications on the World Intellectual Property Office’s register showing applications to register marks using the term ‘Sussex Royal’ since the Sussexes’ international applications. These applications have given rise to some interesting points in the registration process.

Searching for similar marks

The Sussexes may have carried out a search to identify any marks (registered or unregistered) that could support someone raising an issue with any intended applications. If the Sussexes did identify an issue, they may have sought to prevent use of the overlapping marks by reaching an agreement (likely required to be kept confidential) to pave the way for a smoother registration process.

Examining the Sussexes’ marks

After an application is submitted to the UK Intellectual Property Office (UKIPO), an examiner reviews the application to determine whether it satisfies certain requirements. However, the interesting element in the Sussexes’ case is that their marks consist of ‘a representation of Her Majesty or any member of the Royal Family’, which requires consent from the Queen or, as the case may be, the relevant member of the Royal Family.

The examination process took six months, which is longer than usual, indicating that deeper consideration was given to the applications. The UKIPO may have taken time to decide whether permission from the Queen or only the Sussexes was required, and confirming the consent was legitimately given.

It can also be seen that the latest amendment to the applications during the examination process was on 17 December 2019. This was when some terms in the applications were narrowed, meaning the delay may have been due to considering and fine-tuning the goods and services under the trade mark with the examiner, a more common issue in applying to register a trade mark.

Publication and notice of threatened opposition

On publication of a trade mark (after successfully passing examination), the mark will be published in the Trade Marks Journal, starting the two-month ‘opposition period’. During this period, anyone can oppose registration and it can be extended by one month for a party that files a ‘notice of threatened opposition’. This does not cost anything to file, but gives more time to engage with the party filing the application and reach agreement without proceeding to formal opposition.

The media has widely publicised that a number of notices of threatened opposition have been filed against the Sussexes’ applications, with some media outlets commenting that these notices will ‘block’ them. However, it is common to file a notice of threatened opposition to give some breathing room and consider if further action should be taken or to try and reach agreement. Many organisations have standing instructions with their lawyers to file where potentially similar marks to their own are applied for.

At the time of writing, the UKIPO is showing that the ‘Sussex Royal’ application has thirteen notices of threatened opposition filed against it. Media reports suggest that one notice has been requested to be rescinded on the basis that an impostor filed the original notice of threatened opposition.

Opposition

Filing an opposition against registration of a trade mark requires a fee to be paid and the filing of a form that sets out the grounds of opposition. This step should not be taken lightly, as starting the opposition part of proceedings puts each party at risk of an award of costs being made against them. If the party filing the opposition does not give the applicant a reasonable chance to withdraw their application, they will not be awarded any costs or be able to recover the cost of filing the opposition.

Neither of the Sussexes’ trade marks at the time of writing show as being the subject of an opposition at the UKIPO. The Sussexes’ representatives and those that have filed a notice of threatened opposition may currently be in talks to resolve any issues.

Unintended consequences

When you start to look more closely, you can obtain a lot of the finer detail from trade mark registries. Meanwhile, the media can create headlines and stories from filings that are common in the trade mark application process.

Whilst it is possible for anyone to apply and successfully register a trade mark without assistance, it is recommended to take legal advice to prevent issues arising, consider the wider implications of applying to register a trade mark, and of course, to protect your brand adequately.

It is important to do your research before applying and ensure you check your application thoroughly before pressing submit – once submitted the application may not be capable of being changed and the filing fees are non-refundable.

If your application is opposed, it is likely to take some time if you want to challenge the opposing party, so we recommend taking specialist trade mark advice before replying. Registering your mark to protect your brand cannot take place until any opposition has been resolved.

At Coffin Mew, our Commercial & Intellectual Property team has a wealth of experience in developing strategies for brand protection and in applying for trade marks in the UK, EU and throughout the world through our network of agents. For more information, please contact a member of the team or fill in the enquiry form.

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