UK trade mark registration denied for sign including ‘THE ROYAL BUTLER’, following opposition by Lord Chamberlain (on behalf of Her Majesty The Queen)

It seems like only yesterday [to this Kat at least] that the registration (and later withdrawal) of the 'Sussex Royal' trade mark was being discussed (see Katposts here and here). Along the lines of this, the UKIPO saw a similarly regal trade mark application opposed by the Lord Chamberlain, on behalf of Her Majesty The Queen. The trade mark, which featured the words ‘THE ROYAL BUTLER’, was refused trade mark registration on the basis of sections 3(5) and 4(1)(d) of the Trade Marks Act 1994 (TMA), which addresses specially protected emblems. Let’s see what happened.

The 'regal' mark in question

Background

In June 2018, Mr Grant Harrold applied to register the pictured trade mark for the following services under Class 41 of the Nice classification:

Adult training; Education; Education and training consultancy; Entertainment; Entertainment by film; Entertainment by means of radio; Entertainment by means of roadshows; Entertainment by means of television; Entertainment by means of theatre productions; Entertainment, education and instruction services; Entertainment in the form of television programmes (Services providing -); Instruction in etiquette.

Following observations from the Lord Chamberlain that the trade mark might lead average consumers to believe that the party using the mark has Royal patronage or consent, the registrar raised belated objections to the application. However, at an ex parte hearing, this objection was waived, as the hearing officer was satisfied that the words ‘THE ROYAL BUTLER’ would be taken by the public to indicate a fictional, not real, character. The Lord Chamberlain’s opposition (commenced in October 2018, and suspended pending resolution of the registrar’s objection) was then resumed.

Amongst the evidence produced, there was Mr Harrold's previous employment as a butler in the household of HRH Prince of Wales for seven years (between 2005 and 2011). In addition, prior to filing the trade mark application in 2018, Mr Harrold had used the name ‘The Royal Butler’ for around 7 years as a ‘stage name’ for the etiquette and butler training school he ran (with HRH Princess Katarina of Yugoslavia and Serbia as its patron). It was also claimed that Mr Harrold had been granted verbal consent to use ‘The Royal Butler’ in a private meeting with senior members of the Royal Household of HRH The Prince of Wales but, following review of the evidence in the present proceedings, it was found that there was no support that such permission had been indeed received.

Sections 3(5) and 4(1)(d) TMA 1994

Section 4(1)(d) TMA sets out that:

(1) A trade mark which consists of or contains— […] (d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation, shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.

The first meaning of the noun ‘patronage’, as provided by Collins English Dictionary, is “the support given or custom brought by a patron or patroness”, with its second meaning being “(in politics) the practice of making appointments to office, granting contracts, etc”.

In light of the public’s awareness that the Royal household employs butlers, and the importance attached to the observance of correct etiquette in Royal circles, it was found that it was inherently likely that the user of a trade mark featuring the words ‘The Royal Butler’ would be assumed to be someone who holds, or previously held the official title in the Royal household, in relation to training or instruction pertaining to the services of a butler and/or etiquette. Thus, the mark would indicate that the user has, or recently had, Royal patronage.

This impression would not be altered by the inclusion of the device of a lion in the mark. Whilst the lion in question did not look exactly like the lion in the Royal arms, the public would know that the lion in the Royal arms is that of a lion ‘rampant’. The crown on the lion’s head and the raised front legs of the lion would therefore do little to counteract the impression of Royal patronage conveyed by the words ‘The Royal Butler’.

By dividing the services for which registration was sought into two groups - 'educational services' and 'entertainment services' - it was found to be likely that, prima facie, the contested mark would indicate the user has, or recently had Royal patronage if used in relation to the 'educational services'. Whilst this position was more arguable in relation to the ‘entertainment services’ for which registration was also sought, it was accepted that entertainment covers a broad range of services, and that the use of the mark in relation to the types of entertainment services mentioned in the application would also indicate that the provider of the services is, or had recently been, the holder of the official title of ‘The Royal Butler’. Note was also made that some of the services that registration of the mark was sought could be both for educational and entertainment purposes. 

Consequently, the registration of the trade mark applied for in relation to the specified services would be contrary to sections 3(5) and 4(1)(d) TMA 1994.

The Royal, not the butler
Credit: me

(Royal) Consent

Whilst this was mainly a question of fact based on the evidence presented in proceedings, it was noted that, given the wording of section 4(1)(d) TMA, unless the trade mark suggests the patronage or consent of another member of the Royal family, consent would have to given by, or on behalf of, Her Majesty The Queen.

Other grounds of opposition - section 3(4) TMA 1994

Other sub-grounds were also raised by the Lord Chamberlain on the basis of section 3(4) TMA 1994, which sets out that: “A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of EU law other than law relating to trade marks.”

It was submitted that the use of the trade mark would be contrary to UK laws, namely:

• Section 12 of the Trade Descriptions Act 1968 (TDA)

• Regulation 3 of the Consumer Protection from Unfair Trading Regulations 2008 (CPUTRs)

• Section 99(2) of TMA 1994, and 

• Section 1194 of the Companies Act 2006 (CA)

In relation to s99 TDA, it was noted that the section establishes a criminal offence (thus carrying a different burden of proof) but, since the ground was dependent on whether the user had the approval of Her Majesty The Queen, it would add nothing of substance to the opposition based on s3(5) and s4(1)(d) TMA. Section 12 TDA and Regulation 3 CPUTR were considered together, with the conclusion also reached that the legislative sections did not appear to provide additional bases above s99(2), and thus could not take the opponent’s case any further than that as based on s3(5) and s4(1)(d) TMA.

Section 1194 CA was also found to only apply to business names, and the restriction of the scope to such would mean it would have no bearing on the registration of trade marks.

Thus, the sub-grounds of section 3(4) were rejected in their entirety.

Comment

Extensive guidance is provided by the Lord Chamberlain's Office regarding the use of the Royal arms, names and images (see here and here). As mentioned, this case inevitably prompts thought back to the 'Sussex Royal' and 'Sussex Royal The Foundation of the Duke and Duchess of Sussex' trade marks from March of this year. Had the trade mark application gone ahead, it may have been possible for the grounds of refusal raised here to have reared their head.  

However, much as was the case here, the 'Sussex Royal' trade mark applications would have come down to a question of whether consent was granted by Her Majesty The Queen. And, as much as some might appreciate a trade mark opposition being the place to go to get an insight into the state of the Royal family, that, for obvious reasons, is not going to happen.