IP Information & News

Will the real Sussex Royal please stand up?

Dr Christine Lund-Beck

By Dr Christine Lund-Beck

Senior Trade Mark Attorney

It didn’t take Harry and Meghan long to steal the headlines at the start of 2020. Now, their foray into the world of IP brings up an interesting question — namely, can they secure the rights to the term SUSSEX ROYAL despite the efforts of ‘unauthorised’ parties trying to make a quick buck?

Paying the royal royalties

In the light of the media coverage surrounding the Duke and Duchess of Sussex’s step back from ‘royal duties’ and their trade mark application for SUSSEX ROYAL, it has been interesting (and entirely expected by those in the IP industry) to see a number of other parties rushing to file similar applications. Filings have been submitted around the world in Argentina, Australia, Canada, Italy, New Zealand, Spain and the United States.

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Such ‘unauthorised’ applications are generally filed by opportunists who either try to benefit from the publicity at no cost to themselves, or else are ‘squatters’ aiming to get ahead of the game and force trade mark owners such as Harry and Meghan to purchase the ‘unauthorised’ application or take a licence and pay royalties (which seems rather fitting) to use their own trade mark.

Priority, explained

Trade marks are territorial rights, so a UK trade mark only covers the UK. To secure protection outside the UK, you’ll need to file additional applications overseas. The first filing of a trade mark application generates a ‘priority date’ — that on which the first application was filed. Provided that any applications for overseas trade mark protection are filed within six months of this priority date, they can be backdated to that date.

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The Duke and Duchess of Sussex filed a UK trade mark application for SUSSEX ROYAL on 21 June 2019 covering a range of goods and services in classes 16, 25, 35, 36, 41, 45 — this flew largely under the radar in the public sphere at the time. This was then followed by the filing of an International trade mark application with the World Intellectual Property Organisation (WIPO) for the mark SUSSEX ROYAL designating Australia, Canada, Europe and the USA. This covered the same range of goods and services in the same classes and was filed on 20 December 2019 — within the six-month priority period of the UK applications.

As a result, the mark SUSSEX ROYAL is the subject of pending trade mark applications in the UK, Australia, Canada, Europe and the USA covering goods and services in classes 16, 25, 35, 36, 41, 45 — and these applications all claim a filing date of 21 June 2019.

Unless any of these ‘unauthorised’ applications were filed before 21 June 2019, the applications of the Duke and Duchess will take priority as an earlier right. The ‘unauthorised’ applications all appear to date from 8 January 2020 onwards. Therefore, they’ll all be behind the Duke and Duchess in the queue to register SUSSEX ROYAL for the specified goods and services in the specified territories of interest.

The competition

The unauthorised applications are a rather mixed bag, including:

(1) those filed in the same countries covered by the Duke and Duchess and for the same or similar goods and services

(2) those filed in the same countries covered by the Duke and Duchess but for different goods and services

(3) those filed in different countries to those covered by the Duke and Duchess and for the same or similar goods and services

(4) those filed in different countries to those covered by the Duke and Duchess but for different goods and services

For the applications in Group (1) filed in territories where applications are examined with regard to any earlier identical or similar application or registration (such as Australia, Canada and the USA) the applicants are likely to face an uphill task to persuade Trade Mark Examiners to accept the later dated ‘unauthorised’ applications.

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For the other applications in Group (1), filed in territories which don’t examine applications on the basis of conflict with earlier rights, the Duke and Duchess can oppose these applications on the strength of their earlier application.

It will be less straightforward for the Duke and Duchess to prevent the registration of applications in Groups (2), (3) and (4), but there is certainly the potential for interesting opposition proceedings in respect of the trade mark SUSSEX ROYAL. Some trade mark applicants are likely to be left out-of-pocket because they didn’t check the relevant trade mark registers carefully enough, or indeed at all, and failed to take account of any claimed priority period.

Royally drunk

It’s interesting to note that the mark DUKE OF SUSSEX is registered in the UK for “imported fortified wines”. No doubt the owner of this registration will be keeping a close eye on the trade mark activities of the Duke of Sussex — just in case…!

For advice on trade mark registration and protection, get in touch with me at clb@udl.co.uk.

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