As has been reported in sections of the press recently, the Sussexes filed applications to register the trade marks SUSSEX ROYAL and SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX in the United Kingdom back in June 2019. The applications have presumably been of interest to the press insofar as they might shed some light on the Sussexes’ future plans – both applications covered, by way of example, services such as providing charitable fund raising activities, providing education and training relating to nature, and emotional support services.
Following the couple’s decision to step down as senior royals, it came to light that a (rather charming) attorney in the US had filed his own application on 8 January 2020 to register the mark SUSSEX ROYAL as a US trade mark, apparently in order to teach the couple “a lesson about planning”, as he believed that the mark was still available in the US.
In the same vein, it came to light that just one day later, on 9 January 2020, a trade mark troll had filed a European Union trade mark application for the mark SUSSEX ROYAL covering various products which are generally sold as merchandise items, such as jewellery, bags, and toys.
It is important to note that trade mark rights are territorial rights. Filing a trade mark application in a particular country/territory will cover that country/territory only, and will create a public record of the applicant’s interest in a particular trade mark.
Whilst this creates certain risks for trade mark applicants, all is not lost. When an applicant files an application to register a trade mark for the first time for particular goods or services in almost any territory worldwide, this triggers a 6 month “priority period”. During these 6 months, the applicant will have the opportunity to file identical trade mark applications in most other countries, which are effectively backdated to the filing date of the first application.
That is exactly what the Sussexes did. On 20 December 2019, Harry and Meghan had filed applications for International Registration under the Madrid Protocol with the World Intellectual Property Organisation (WIPO). The applications covered Canada, the United States, Australia and the European Union, and claimed priority from the United Kingdom trade mark applications filed in June 2019. So, not only had they got in before the trade mark trolls’ January filing dates, but they’d also effectively back-dated their rights to June 2019. Unfortunately for the trade mark trolls in this case, there can be a delay between applications being filed and appearing on the public record, particularly in the case of International Trade Mark Registrations. Hopefully the US attorney who wanted to teach Harry and Meghan a lesson will himself have learned a lesson from this episode!
There are two clear messages here for all trade mark applicants.
Firstly, it is important to consider an appropriate global filing strategy in good time, and to put applications in place in all countries/territories of interest before the end of the 6 month priority period. By doing so, you will reduce the risk of an unscrupulous third party getting in before you and blocking your path to registration. Depending on the particular countries/territories of interest, the International Registration route chosen by the Sussexes can be a cost-effective way of seeking trade mark protection in multiple territories.
Secondly, don’t assume that, just because you can’t see an application for a particular mark on the online database, the mark is available for you to register. There could well be an application in the pipeline that hasn’t yet been made publicly available!
Co-Author: Elaine Deyes
Hopefully the US attorney who wanted to teach Harry and Meghan a lesson will himself have learned a lesson from this episode!