Royal Branding and Trade Marks
| DOI | 10.1093/jiplp/jpaa069 |
| Date | 01 May 2020 |
| Pages | 409-410 |
| Year | 2020 |
| Published By | Oxford University Press |
Editorial
Royal branding and trade marks
Nedim Malovic*
Late last year, media reported that Meghan Markle and
Prince Harry had filed two trade mark applications with
the UK Intellectual Property office (UK IPO) to have, re-
spectively, ‘Sussex Royal’ and ‘Sussex Royal The
Foundation of the Duke and Duchess of Sussex’, regis-
tered as UK trade marks. Since then, as Harry and
Meghan have taken the decision to drop their royal
duties and Royal Highness (HRH) titles, media have also
reported that the couple would give up their two pending
trade mark applications as well. Amidst all this royal tur-
bulence, an interesting question is whether the couple
could still style themselves as ‘royal’, and thus exploit the
Sussex Royal brand in doing so, even despite that fact
that they would not perform any royal duties.
To start with, the use of certain royal insignia as trade
marks is protected internationally under Article 6ter of
the Paris Convention. In brief, the provision sets out that
all contracting parties undertake not to register trade
marks which incorporate or imitate State emblems, ar-
morial bearings, official signs or hallmarks, which are
designated as protected emblems under the Convention.
The rationale is that country names and identities often
function as brands which indicate the origin of the goods
and services. A country’s name, flag, emblem or coat of
arms can therefore be said to signal to the public that
there is a relationship between the nation and the prod-
ucts and services in respect of which it is being used.
1
Not only could this become problematic for a nation,
which may or may not have control over the products
distributed using its identity and goodwill, but it might
also damage the reputation and brand value that a nation
has built over time.
Adding to the above, attention should also be directed
to section 4(1)(d) of the UK Trade Marks Act 1994. In
brief, this provision sets out that a trade mark, which con-
sists or contains words, letters or devices likely to lead per-
sons to think that the applicant either has or recently has
had Royal patronage or authorization, shall not be regis-
tered unless consent has been given by or on behalf of Her
Majesty or a relevant Member of the Royal Family.
Section 4(1)(d) involves an assessment of the impact that
the trade mark as a whole would have on the average con-
sumer of the goods and/or services in relation to which
the mark would be used, including leading them to believe
that the applicant either has or recently has had Royal pa-
tronage or authorization. Section 4(1)(d) was applied by
the UK IPO in case O/533/18
2
, concerning a trade mark
application for ‘Royal Christmas Gala’
3
and, prior to that,
in O/254/10
4
, concerning a trade mark application for
‘The Combined Armed Forced Federation’. Despite that
in the latter case the trade mark applied for did not con-
tain the element ‘Royal’, the hearing officer reasoned that
the provision would not be limited to Royal crowns:
rather, it is a more general prohibition on the registration
of “words, letters or devices likely to lead persons to think
that the applicant either has or recently has had Royal pa-
tronage or authorisation”.
5
Another aspect to consider is also the nature of goods
and services envisaged under the mark applied for. In the
UK IPO’s Examination Guide, it is specified that not all
goods and/or services will prompt a consumer to believe
that there is connection between the mark sought for and
the presence of a Royal patronage or authorization.
6
Examples of goods or services for which ‘royal’ may indi-
cate Royal patronage include high quality porcelain or
glassware, luxury foods, organic food, confectionery, al-
coholic beverages, clothing, and organization of sporting
events. The list is not exhaustive. However, everyday
items, insurance or financial services, double glazing
services, provision of electricity, or goods which are far
enough removed from any association with the Royal
family such as skateboards, computers, computer games
or T-shirts would likely escape the application of the
provision.
7
* nedimmalovic@gmail.com.
1 Natalie G.S. Corthe´sy, Trade marks, country names and misappropria-
tion of national identity (2017) 12(4) JIPLP 297, 300. For a recent dis-
pute concerning Iceland (the country) and Iceland (the trade mark), see
D Meale – N Walles, ‘The country of Iceland freezes out the eponymous
supermarket: ICELAND trade marks invalidated’ (2020) 15(1) JIPLP 4.
2 UK IPO, decision O/533/18, 28 August 2018.
3Ibid, [16].
4 UK IPO, decision O/254/10, 15 July 2010.
5Ibid, [46].
6 UK IPO, Manual of trade marks practice (2009), p. 206.
7Ibid.
V
CThe Author(s) 2020. Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jpaa069
Advance Access Publication 1 May 2020
Journal of Intellectual Property Law & Practice, 2020, Vol. 15, No. 6 409EDITORIAL
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