Trade mark lessons; The Duke and Duchess of Sussex and the couple’s new filing

As you will know; the best way to protect your brand against ‘copy cats’ is to apply for a trade mark.

It is well known that the former Duke and Duchess of Sussex filed for the trade mark ‘Sussex Royal’ last year (see previous articles for more background on this). As explained previously the trade mark was to cover goods and services for a charitable organisation as well as selling branded clothing.

They faced many challenges when filing for this trade mark including both public scrutiny and legal challenges.

The challenges represented a reminder on the need for good planning if you are applying for a new trade mark. You should be aware of what jurisdictions you want your trade mark to be filed in and protect in those areas. The Duke and Duchess had a legal battle with Joel Fogelson, a US IP Attorney, who filed for the same trade mark in the US. Whether Fogelson’s trade mark was made in bad faith is debatable. He filed for his mark in class 38 (covering computer transmission and terminals) as to not infringe with the classes of the Duke and Duchess.

Despite this lesson the Duke and Duchess, applied for an International trade mark through WIPO, with the primary country being their UK mark. The mark would then be examined in accordance with domestic laws in each Jurisdiction. This causes a problem for Fogelson’s US patent, as each country will operate on a first to file basis. This means that the date of the couple’s UK filing would be used as a basis and could be used, if necessary, to challenge any marks filed after (such as that of the US attorneys). This use of predating, benefited the royals in their attempt to trade mark in the US. But, an issue arose concerning the difference in classes. The stark contrast in the classes they have filed in means it is hard for the royals to successfully oppose unless they can claim a risk of confusion.

Despite these problems, the couple have recently filed for a new trade mark. This time the couple originally kept their trade mark a secret and are did not release any detailed information on their new mark. At a more appropriate time, a statement was made which notes that they plan to trade mark ‘Archewell’ in accordance with their new born son’s name, Archie. The mark will cover charitable contributions, “downloadable magazines, audio books, motion picture films and television shows”.

Learning from the above, it is important if you are applying for a trade mark that you forward plan and ensure that you understand what jurisdictions you want to be covered in. Remember, trade marks are territorial and therefore if you file in the UK, for example, you are not therefore protected in the US. If you are looking to file for a trade mark or concerned about the risk of opposition please do not hesitate to contact the Trademarkroom team for assistance today.

Anna Orchard

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