March 16, 2020
By Wynnie Chan and Jasmine Godfrey
It is now common knowledge that Prince Harry and Meghan Markle plan to step back from royal life effective March 31st. Long before their departure was announced, it appears that the Duke and Duchess of Sussex had been anticipating a possible break from the Royal Family as they have been preparing the launch of an independent charitable enterprise of their own for months. For example, in April 2019, the couple created an Instagram account introducing everyone to “@sussexroyal”. About three months later, Sussex Royal The Foundation of the Duke and Duchess of Sussex (the “Foundation”) was incorporated. To protect their brand, the Foundation applied to register the trademarks SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX in the UK with printed material, clothing and services relating to campaigning, charitable fundraising, education, publishing and social care services. The application was filed on June 21, 2019. On December 20th, the Foundation filed an international application through the Madrid system designating Australia, Canada, the United States and the European Union. It is speculated that the Foundation was motivated to defensively file in different countries to protect itself from third parties squatting or trolling on the SUSSEX ROYAL mark.
Indeed, the Foundations’ concerns were well founded. As soon as Prince Harry and Meghan announced their intention to resign from their official royal duties on January 8, 2020, five new trademark applications for SUSSEX ROYAL were filed with the U.S. Patent and Trademark Office by different individuals or companies within the same week. In Canada, two separate applications to register SUSSEX ROYAL were filed by “Royalmount Spirits Inc.” and “Juice Marketing Inc” for clothing and alcoholic beverages, and kitchen accessories, respectively. Elsewhere, over 20 applications for SUSSEX ROYAL were filed by varying companies or individuals covering a broad range of goods and services. For example, an individual named Dr. Gáspárdy Pál András filed an application for SUSSEX ROYAL in Hungary in six Nice classes. None of these applicants appear to be authorized, licensed or tied to Prince Harry, Meghan or the Foundation.
Now that the Queen has reportedly banned the couple from using SUSSEX ROYAL as a brand or charity name, the couple has formally announced that their non-profit organization will not use the name “Sussex Royal” or any other iteration of “Royal” moving forward. This is somewhat unfortunate, as Prince Harry and Meghan had begun to garner goodwill and rights to the SUSSEX ROYAL mark through use. Not only did their Instagram account accumulate over 11 million followers, the Duke and Duchess’ official website at sussexroyal.com promoting the couple’s charitable work reached over 1.5 million visits in January alone. It has yet to be seen what will happen to the @sussexroyal Instagram account and sussexroyal.com website and domain name.
As for the Foundation’s UK and international applications for SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX, these were withdrawn on February 25, 2020 while the majority of applications filed by other parties are still waiting for review by local IP offices. Given that the Foundation’s home application is now inactive, the international application will soon be deemed invalid. Curiously, had Prince Harry and Meghan kept their applications pending, would they have held up in Canada and the rest of the world?
Registrability of SUSSEX ROYAL
Canada’s trademark regime stands out from others in that special protection is granted to certain bodies holding a “Section 9” official mark. Under that provision, no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… any word or symbol likely to lead to the belief that the goods or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority”. Arguably, the mark “SUSSEX ROYAL” could lead someone to mistakenly believe that any goods or services associated with that mark are of royal patronage and so an application for SUSSEX ROYAL could be refused unless consent or approval from the proper authority is provided. Current Canadian trademark practice suggests that the Foundation would have faced other challenges as well, including geographical, descriptiveness and distinctiveness objections.
Prince Harry and Meghan may have had better luck obtaining registration in the United Kingdom, where the first application for SUSSEX ROYAL was filed. The UK Intellectual Property Office examination manual states that “the word ‘royal’ is unlikely to indicate Royal patronage or authorization for everyday items (e.g., insurance or financial services, double glazing services, provision of electricity) or for goods which are far enough removed from any association with the Royal Family (e.g., skateboards, computers, computer games or T-shirts). However, other goods and services that are deemed to be problematic for potentially indicating a royal link include high quality porcelain and glassware, luxury foods, exhibitions, tourism, and charitable services. Interestingly, Prince Harry owns a UK registration with his brother and Kate Middleton for the mark THE ROYAL FOUNDATION OF THE DUKE AND DUCHESS OF CAMBRIDGE AND PRINCE HARRY. Given the seemingly cold interaction between the royals at Prince Harry and Meghan’s last official royal engagement earlier this month, it will be interesting to see whether this mark will be withdrawn as well.
What lessons can brand owners learn from Prince Harry and Meghan?
Prince Harry and Meghan Markle’s saga with its applications and the use of SUSSEX ROYAL as a brand teaches us the importance of filing strategically.
For high-profile companies and individuals, trademark trolls and squatters are a serious threat, and can disrupt and delay legitimate brand owners from registering their trademarks. As we have seen, a number of unauthorized applications for SUSSEX ROYAL were filed immediately after Prince Harry and Meghan announced plans to step back from royal life and focus on their new charitable entity. Fortunately, the Foundation had already secured prior rights to the SUSSEX ROYAL mark by filing an application in the UK well before the Foundation’s launch, and presumably, used that originating application to file in other countries. Had they not been diligent in meeting their priority filing deadlines, or filed after the couple’s big announcement in January, their applications in the U.S., Canada, Australia and the EU would likely have been held up during examination for confusion with these third-party marks.
To no one’s surprise, Prince Harry and Meghan faced criticism for their decision to part from their royal duties, and many questioned the couple’s motives of registering a trademark. According to the SUSSEX ROYAL website, Prince Harry and Meghan justified their filings as “protective measures” that “reflected the same standard trademark requests as done for The Royal Foundation of the Duke and Duchess of Cambridge”. Although such public explanations on trademark filing strategies are relatively uncommon, it was likely done to dispel any false rumors about their departure.
Despite the unfortunate bad press that seems to have haunted Prince Harry and Meghan throughout their attempt at obtaining formal trademark protection, brand owners can appreciate that the royal couple’s efforts have made them more cognizant of the importance of filing early, filing first, and claiming priority whenever possible.
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