Be like the Royals and protect your brand – Julie Canet

When you’re trying to establish a brand, protecting its name is paramount. At this early stage, it’s important to consider your aspirations and long-term business growth plans.

Harry and Meghan's attempts to define themselves via trade marks have thus farbeen frustrated by a combination of critical publicity and legal challenges (Picture: AFP/Getty)

Perhaps you want to test the water by trading initially in the UK. If all goes well, you’d like to spread your wings internationally. If so, the time to consider brand protection in other jurisdictions outside the UK is now.

You don’t want to find someone has beaten you to the punch when you eventually try to file for a trade mark in other jurisdictions.

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The public has never been so aware of the trade mark process thanks to a recent, high profile example in the media. I’m talking, of course, about the Duke and Duchess of Sussex, who have announced their intention to step back from royal duties and “transition into a new working model”.

Details of how they intend to make a living outside the Royal Family aren’t entirely clear yet – but the resources they have by virtue of Meghan’s celebrity and Harry’s royal status will be key to their future careers.

As with any brand, the best means of protection is through the strategic use of trade marks. The couple’s attempts to define themselves via trade marks have thus far, however, been frustrated by a combination of critical publicity and legal challenges.

Alongside Sussex Royal, Harry and Meghan also filed The Foundation Of The Duke And Duchess Of Sussex on 21 June, 2019 in the UK. The applications cover, among other things, stationery, clothing, promotional services, charitable fundraising, education services and social care services.

One of the challenges facing the couple was from US intellectual property attorney Joel Fogelson who – on the date of the Sussexes’ big announcement – filed a US trade mark for Sussex Royal. Fogelson’s application is for Class 38 goods, which relate to “communications by computer terminals; transmission and delivery of video, audio, and data via the Internet and wireless communication networks”.

Apparently this was done to “teach the couple a lesson about planning” and Fogelson reportedly stated he’d be happy to assign the trade mark to Harry and Meghan, free.

Could he effectively hold the Sussexes to ransom, or had they done their homework? It would seem so, potentially allowing them to challenge this trade mark if they choose – because after they filed for the mark ‘Sussex Royal’ in the UK, they also filed an “International Registration” (IR) at the World Intellectual Property Organisation (WIPO), in December, based on the UK application.

An international registration enables trade mark proprietors to cover multiple jurisdictions through a single application. The trade mark owner has to stipulate the countries in which they wish to obtain trade mark protection and the IR will automatically split into a series of applications examined in accordance with the domestic laws of each country. This particular IR designates Australia, Canada, the EU and US and claims priority based on the UK trade mark application for Sussex Royal.

What’s more, generally speaking, most countries operate on a first-to-file basis. This means the trade mark with the earlier filing date can be used as a basis to challenge subsequent attempts to use or register identical or confusingly similar marks. “Priority” is a mechanism enabling trade mark proprietors to claim applications filed within six months of the first application are given the same filing date as the first one.

The US designation will therefore be treated as if it was filed on the UK application date, 21 June, 2019 – meaning Harry and Meghan’s US designation predates, and could be used as a basis to challenge, Fogelson’s application.

The only dilemma is that “Class 38 goods” were not covered by Sussexes’ application. To successfully oppose Fogelson’s registration, they would need to demonstrate goods and services covered by their application are similar to those covered by his.

Also, if Fogelson’s intent was “to teach Harry and Meghan a lesson”, this could constitute bad faith under US trade mark law.

It will be interesting to see the outcome but one thing is for sure; this all highlights the importance of brand protection through securing trade mark rights and the relevance of an early filing date to avoid a royal headache.

Julie Canet is a trainee trade mark attorney, Marks & Clerk