Thursday, 23rd January, 2020

Cashing in on the Crown: where to now for brand Sussex Royal?

The Duke and Duchess of Sussex’s decision to step down from royal life has left the future of their ‘Sussex Royal’ brand up in the air. The recent announcement from Buckingham Palace confirming their agreement not to use the ‘HRH’ title suggests the couple will no longer be allowed to cash in on their royal credentials. This is despite Harry and Meghan’s move to register the trade mark SUSSEX ROYAL in several countries around the world, commercialising a brand that some experts have predicted could generate revenues of more than US$500 million.

Like ‘Megxit’, the process of registering SUSSEX ROYAL as a trade mark could face its own challenges. Harry and Meghan, through The Foundation of the Duke and Duchess of Sussex, have applied to register the trade mark for a variety of goods and services in the UK, Australia, Canada, the United States and the European Union. They have filed an application through the ‘Madrid System’, a mechanism that streamlines the process of registering a trade mark in selected countries around the world. Even though the applications have been filed through a centralised bureau, each application will be examined according to the local laws of the selected country. For example, the Australian trade mark application will be examined according to Australia’s trade mark laws.

As a commonwealth country, New Zealand has specific laws and guidelines regulating the registration of trade marks that incorporate words, images or emblems connected to the Royal Family. A trade mark that contains a representation or emblem of the Queen or any member of the Royal Family cannot be registered without the consent of the Queen or that member of the Royal Family. There are also restrictions prohibiting the registration of trade marks incorporating the word ‘royal’ without the consent of the Queen’s representative in New Zealand, the Governor-General. This is because those trade marks suggest royal or government patronage.  

There is also a general provision in the New Zealand Trade Marks Act that prohibits the registration of trade marks that are likely to deceive or cause confusion. This would include a trade mark which creates an association with the Royal Family, and misleads consumers to believe the goods and/or services for which it is registered are connected with or authorised by the Royal Family, when in fact there is no such connection or authorisation.   

There is nothing under Australia’s trade mark legislation explicitly banning the registration of trade marks connected to the Royal Family or incorporating the word ‘royal’. However, as in New Zealand, these sorts of trade marks are likely to encounter an objection under a general provision prohibiting registration of a trade mark that is likely to deceive or cause confusion. Harry and Meghan’s trade mark SUSSEX ROYAL is unlikely to be caught by these provisions given the application has been filed in the name of their foundation. However, there are other issues that could frustrate or delay their trade mark applications.

For instance, an identical or similar trade mark that has priority could ‘block’ an application for SUSSEX ROYAL. A trade mark application or registration will have priority if it has an earlier filing date. Interestingly, an individual has applied to register ‘sussex royal’ in relation to ‘clothing’ in Australia. However, the trade mark application was filed on 14 January 2020, seven months after the official SUSSEX ROYAL application. So, this seemingly opportunistic attempt to monopolise the brand before Harry and Meghan is unlikely to succeed. However, Harry and Meghan may face challenges securing registered protection and exclusive use of their brand in countries like China, where the first person to register a trade mark generally holds the rights to that trade mark.

Of course, the move to register SUSSEX ROYAL as a trade mark occurred before Harry and Meghan announced they would no longer act as official representatives of the royal family. It is yet to be seen whether they continue to use the trade mark and pursue their global registration strategy. Some critics have argued that doing so after they have voluntarily stepped down from royal duties would be inappropriate. However, the fact that the value of the brand is essentially built on their association with the British monarchy makes these developments all the more interesting.