Meghan Markle and Prince Harry seek to register “Sussex Royal” as a UK trade mark

Last June, royal couple Meghan Markle and Prince Harry filed two trade mark applications with the UK Intellectual Property office (UK IPO) to have, respectively, “Sussex Royal” and “Sussex Royal The Foundation of the Duke and Duchess of Sussex”, registered as UK trade marks.

Meghan Markle and Prince Harry

The applications were published on 20 December 2019, after it was announced that the couple would separate from the organization (The Royal Foundation), to which they participated together with Prince William and Duchess Kate Middleton, in order to form their own charitable venture, that is … Sussex Royal. The foundation will likely start operating this year. Also the launch of a Sussex Royal newspaper appears to be on the cards.

Kensington Palace acknowledged the dissolution of the former joint charity in a statement last year: “The Royal Foundation will become the principal charitable and philanthropic vehicle for The Duke and Duchess of Cambridge”.

The Palace went on to describe the choice for the royals to separate their charitable ventures as a decision to “best complement the work and responsibilities of Their Royal Highnesses as they prepare for their future roles, and to better align their charitable activity with their new households.” (see here).

The trade mark applications

The application for the word mark “Sussex Royal” is sought for the following Classes of goods and services (see the full list here):

16 (printed matter, instructional and teaching materials, printed educational materials, printed publications, books, educational books, textbooks, brochures, pencils, pens),

25 (clothing, footwear, headgear, t-shirts, coats, jackets, anoraks, trousers, sweaters, jerseys),

35 (campaigning, promotional and public awareness campaigns, marketing and promotion of charitable campaigns, promoting charitable fundraising events),

36 (charitable fund raising, management of charitable funds, financial grant services, financing of projects, charitable foundation services),

41 (education, providing of training, sporting activities, cultural activities, arranging and conducting educational events, arranging and conducting of conferences, conventions, exhibitions, classes, lectures, seminars and workshops), and

45 (social care services namely organising and conducting emotional support groups, counselling services, emotional support services) of the Nice Classification.

Previous misadventures

This is not the first time that we see celebrities, including those with a royal status, applying to register trade marks that cover a wide range of goods and services. Also, it would not be the first case to make headlines in the event that the trade mark application was opposed.

One of the main issues with these applications is that it is not a given that the relevant signs actually function as trade marks. For instance, readers might recall the bad luck of Cardi B’s trade mark application for the word mark “OKURRR” (see here). The more common a term or expression is, the less likely it is that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trade mark.

Now that the application has been published on the Trade Mark Journal, third parties are able to oppose the registration for another two months, based on absolute and/or relative grounds. Once two months have passed (without any opposition), the marks will officially be registered.

It has not yet been confirmed what uses the marks will be put to, except for what the press has anticipated. In the UK, the law requires an applicant to state whether they are using the mark or have a bona fide intention to use it. Currently, intention to use (or lack thereof) is one of the issues at the centre of the Skykick CJEU referral, which will be decided on 29 January [Katpost here]. To be continued...