Issue Section:
 Editorial
Late last year, media reported that Meghan Markle and Prince Harry had 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. Since then, as Harry and Meghan have taken the decision to drop their royal duties and Royal Highness (HRH) titles, media have also reported that the couple would give up their two pending trade mark applications as well. Amidst all this royal turbulence, an interesting question is whether the couple could still style themselves as ‘royal’, and thus exploit the Sussex Royal brand in doing so, even despite that fact that they would not perform any royal duties.
To start with, the use of certain royal insignia as trade marks is protected internationally under Article 6ter of the Paris Convention. In brief, the provision sets out that all contracting parties undertake not to register trade marks which incorporate or imitate State emblems, armorial bearings, official signs or hallmarks, which are designated as protected emblems under the Convention. The rationale is that country names and identities often function as brands which indicate the origin of the goods and services. A country’s name, flag, emblem or coat of arms can therefore be said to signal to the public that there is a relationship between the nation and the products and services in respect of which it is being used.1 Not only could this become problematic for a nation, which may or may not have control over the products distributed using its identity and goodwill, but it might also damage the reputation and brand value that a nation has built over time.
Adding to the above, attention should also be directed to section 4(1)(d) of the UK Trade Marks Act 1994. In brief, this provision sets out that a trade mark, which consists or contains words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorization, shall not be registered unless consent has been given by or on behalf of Her Majesty or a relevant Member of the Royal Family. Section 4(1)(d) involves an assessment of the impact that the trade mark as a whole would have on the average consumer of the goods and/or services in relation to which the mark would be used, including leading them to believe that the applicant either has or recently has had Royal patronage or authorization. Section 4(1)(d) was applied by the UK IPO in case O/533/182, concerning a trade mark application for ‘Royal Christmas Gala’3 and, prior to that, in O/254/104, concerning a trade mark application for ‘The Combined Armed Forced Federation’. Despite that in the latter case the trade mark applied for did not contain the element ‘Royal’, the hearing officer reasoned that the provision would not be limited to Royal crowns: rather, it is a more general prohibition on the registration of “words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation”.5
Another aspect to consider is also the nature of goods and services envisaged under the mark applied for. In the UK IPO’s Examination Guide, it is specified that not all goods and/or services will prompt a consumer to believe that there is connection between the mark sought for and the presence of a Royal patronage or authorization.6 Examples of goods or services for which ‘royal’ may indicate Royal patronage include high quality porcelain or glassware, luxury foods, organic food, confectionery, alcoholic beverages, clothing, and organization of sporting events. The list is not exhaustive. However, everyday items, insurance or financial services, double glazing services, provision of electricity, or goods which are far enough removed from any association with the Royal family such as skateboards, computers, computer games or T-shirts would likely escape the application of the provision.7
Going back to where we began: could the couple therefore still style themselves as ‘royal’, and thus exploit the Sussex Royal brand in doing so, without performing any royal duties? Ultimately, it appears that the safest solution might be first to consult with … Her Majesty.

Footnotes

1
Natalie G.S. Corthésy, Trade marks, country names and misappropriation of national identity (2017) 12(4) JIPLP 297, 300. For a recent dispute concerning Iceland (the country) and Iceland (the trade mark), see D Meale – N Walles, ‘The country of Iceland freezes out the eponymous supermarket: ICELAND trade marks invalidated’ (2020) 15(1) JIPLP 4.
2
UK IPO, decision O/533/18, 28 August 2018.
3
Ibid, [16].
4
UK IPO, decision O/254/10, 15 July 2010.
5
Ibid, [46].
6
UK IPO, Manual of trade marks practice (2009), p. 206.
7
Ibid.