As they step away from public – and royal – duties, the Duke and Duchess of Sussex had intended to brand their future commercial activities with the trademark “Sussex Royal”. However, this strategy has hit a seemingly insurmountable obstacle, following news that the couple’s continued use of the term “Royal” has been vetoed by The Queen, no less. The couple will now be forced to rebrand, from their hugely popular @sussexroyal Instagram feed, to their charitable Sussex Royal Foundation.

Commenting on this enormous setback for the couple, Thomas Coop, trademark attorney at Fieldfisher, said:

“From a trademark perspective, the news that the Queen has stopped Megan and Harry from using SUSSEX ROYAL highlights a rarely discussed area of UK Trademark Law in Sections 3 and 4 of the UK Trademarks Act 1994. Trademark applications at the UK Intellectual Property Office (UKIPO) can be refused if the products or services covered by the application would lead people to believe that there is an association with the Queen or the Royal Family. This can include images in trademark applications which are similar to the Royal crown, Royal flags, Royal arms as well as wording which may suggest that the applicant has or recently has had royal patronage or authorization.

“The UKIPO’s treatment of trademark applications including the word ROYAL seems variable, with luxury products or certain events generally more clamped down upon in contrast to everyday products or services such as double-glazing services. For example, it is interesting to see that a recent UK trademark application for ROYAL PALACE was refused in relation to services such as catering owing to a perceived link to the Royal Family but was accepted for disco services. This highlights the variable protection provided to the word ROYAL by the UK Intellectual Property Office and the idea there must be a link between the products/services and the Royal Family.

“Alongside this we would note that it is possible to overcome the objections in Section 3 and 4 issued by the UK IPO if the applicant is provided with consent or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family. In this instance it is interesting to see that Harry and Megan’s UK trademark application for SUSSEX ROYAL was published. Therefore, it is possible that the Queen consented to the initial application and has now withdrawn this consent.

“Finally, the provisions regarding the use of the word ROYAL are not mirrored at the EU Intellectual Property Office. This can give a potential workaround until the end of the transition period (31 December 2020) to obtain some level of protection in the UK. However, we would flag that there would be a risk that if you include the word ROYAL alongside a descriptive word that a trademark application can still be refused on the grounds that it is non-distinctive. Additionally, it will be interesting to see how ROYAL EU trademarks are treated following the end of the transition period when they are effectively cloned to the UK register.

“Overall, as the UK is likely to be an important market for Harry and Megan, it is possible that they will need to consider rebranding or come to some new arrangement with the Queen so they can gain the benefits of having registered protection for their brand name, such as making it much simpler to enforce against other parties.”

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