“Sussex Royal” trademarks for former “Royals”, Harry & Meghan

by: Kim Capiau

Prince Harry and Meghan Markle surprised the world when they announced their resignation from the British royal family and waived a large portion of government funding. Busy planning their future, Meghan signed a deal with Disney to launch a charity foundation with the name “Sussex Royal The Foundation Of The Duke And Duchess Of Sussex”. Given their recent departure from the monarchy, it is an interesting decision to choose a name “Royal” – which no doubt raises eyebrows within the Royal Family.

What’s covered under their Trademarks and where did they file?

At the end of 2019, they filed trademarks in the UK for “Sussex Royal” and “Sussex Royal The Foundation of the Duke and Duchess of Sussex”, in order to prevent anyone from using the same name in the same field. The trademark filing covered all kinds of goods and services including: educational materials, promotional materials (e.g. hoodies), campaigning, charitable fund raising and educational services. Since they want international trademark protection for their name, they also filed trademark applications with the World Intellectual Property organization (WIPO) with designated countries Australia, Canada, European Intellectual Property Office and the US.

Will they get their trademark applications registered?

Harry and Meghan’s trademark application is running into some roadblocks including several “notices of threaten oppositions” on their published UK application. What’s important to note here is that anybody can send these notices and they’re not necessarily based on any formal grounds. These notices simply provide applicants an extra month to file an opposition.

For now, we’ll just have to wait and see if Meghan and Harry receive any formal oppositions to their trademarks. If that occurs, it could be the start of lengthy opposition procedures and bringing uncertainty on whether they will be able to register the marks.

Can other people use the name “Sussex Royal”?

It seems that after Harry and Meghan’s trademark application, many companies/individuals worldwide who were using or going to use the name “Sussex Royal” were quick to file a trademark application as well to preserve their rights. Plenty of trademark applications for “Sussex Royal” were subsequently filed worldwide (mostly in Australia, Canada and the US) associated with goods and services including everything from bed equipment to household utensils to wireless communication networks.

The UK, Australia, European Intellectual Property Office and the US are all “use-based” countries. This means that in those jurisdictions, the applicant who proves that he/she used the mark first on goods and/or services in the same field will be able to register their trademark. Use in of trademark generally means the following:

  • For goods (e.g. clothing, books):  use of the mark on the goods itself or on their packaging/label. A mark is also used if it is displayed on a website in close proximity to information on how to purchase them.
  • For services (e.g. training): use of the mark in proximity to offering the services e.g. on a website or on advertisements, social media, brochures…
  • The date of use is the date that you started regularly selling the goods or performing the services in a certain jurisdiction.
  • The location of your company is not important for the prove of use: when your company is located in Switzerland but you are selling goods or performing services under the mark to Canada through their website, you are using the mark in Canada.

It is important to note however, that similar or same trademark names can coexist if they are used in completely different fields because they are not likely to confuse potential clients that the marks belong to the same owner. For example, there is a good chance that the company who filed an application for the mark “Sussex Royal” for selling kitchen utensils will be able to register the trademark as it has nothing to do with Harry and Meghan’s use of the name for their charity foundation.

Are you confronted with somebody using a similar or same name as your brand name? Or do you need a little help navigating trademark law? We can help you assess your trademark opportunities and obtain trademark protection. Operating as a full-service trademark firm for the US and Canada (and working with trademark partners worldwide), Stratford Intellectual Property can ensure you’ve got peace of mind when it comes to trademark protection.

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