Over the last week you will have probably come across one of the many news reports claiming that the Queen has banned Harry and Meghan from using the word ‘royal’ in their branding as they step back from being senior royals. The couple have allegedly spent tens of thousands on their Sussex Royal website and related branding, so it may have come as a shock when they were told that they would have to start from scratch and re-brand. They intended to register ‘Sussex Royal’ as a global trademark for a range of products including books, stationery and clothing. Most recently it has been claimed in the news that the couple are angry at having to drop the brand and believe that the monarchy has no jurisdiction over the use of the word ‘royal’ overseas. Consequently, what does the law say?
Firstly, section 4 of the Trade Marks Act 1994 states what emblems are protected and can not be registered. This includes national/royal flags and royal arms/crowns. This also includes military insignia and logos. As for the word ‘royal’, section 4 (1) (d) states ‘words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation, shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty’. Clearly the Queen has not given her consent to use the word ‘royal’, which they need as they step back from royal life.
When it comes to the use of the word ‘royal’ overseas, we can look at the Paris Convention for the Protection of Industrial Property (1883). This convention has been amended several times with the most recent being in 1979. It was originally between 8 countries but now has 177 members, including Canada and the United States of America. Considering there are 195 countries in the world this convention covers most of the globe. The convention applies to intellectual property including patents, trademarks and design. It states that each contracting State must ‘refuse registration and prohibit the use of marks that constitute a reproduction, imitation or translation, liable to create confusion of a mark used for identical and similar goods and considered by the competent authority of that State to be well known in that State and to already belong to a person entitled to the benefits of the convention’. It also states that marks without authorisation that contain armorial bearings, state emblems, official signs/hallmarks of a contracting State should be refused. This includes flags, emblems, abbreviations and names of certain intergovernmental organisations. Authorisation or refusal should be communicated through the World Intellectual Property Organisation (WIPO). As Her Majesty the Queen and the royal family are most certainly well known it could create confusion that the products bearing the ‘Sussex Royal’ brand are connected to the royal family that Harry and Meghan are stepping back from. If the WIPO accepts the refusal then Harry and Meghan will not be able to register ‘Sussex Royal’ in all 177 member States of the convention.
In common law you also have the tort of passing off. Passing off is when a person or business passes off another party’s services or goods by misrepresentation. Common law rights protect against the passing off by others in relation to names, slogans and other elements. The law of passing off in the U.K has been developed by the courts through case law. The claimant must show that they posses a reputation or goodwill in their mark, name, goods or other identifying features. There must be misrepresentation by the other party which has led to the public believing that the goods/services belong to the claimant. The misrepresentation must cause damage to the claimant’s goodwill or reputation. The tort of passing off could be used to pursue compensation from Harry and Meghan if they were to misrepresent the royal family.
It should also be noted that Canada (a commonwealth member), the country Harry and Meghan now live in have a very similar act regarding Intellectual Property as the United Kingdom (U.K) does. Section 9 of Canada’s Trademarks Act 1985 goes through the prohibited marks and words associated with the royal family much like section 4 of the U.K’s Trade Marks Act 1994 does.
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Written by Samuel Killoran who is a Law Student at Solent University.