10 Jan
2020

Risks for Sussex Royal: unauthorised EU trademark application targets Prince Harry and Meghan Markle

  • Prince Harry and Meghan Markle announce plans to step back from royal life
  • WTR uncovers EU trademark application for SUSSEX ROYAL mark, lodged yesterday
  • Highlights move for brand vigilance as fallout from couple’s announcement continues

WTR has discovered a newly-filed trademark application at the EU Intellectual Property Office (EUIPO) that appears to be targeting the Sussex Royal brand associated with Prince Harry and Meghan Markle. As debate rages about the commercial merits of the couple’s intended split from the Royal Family, the application is a reminder of the significant IP risks that they face in the wake of their global fame.

As has been widely reported in recent days, the Duke and Duchess of Sussex filed a UK trademark for SUSSEX ROYAL in June 2019, covering six classes and more than 100 goods and services. The move has been seen as a possible indicator of the commercial plans that the couple have for their new Sussex Royal brand, which was announced after the pair left the Royal Foundation charity last summer (the first use of the brand name being the couple’s Instagram account launched in April 2019). One retail expert, for example, told the Daily Mail that use of the SUSSEX ROYAL trademark on products could “generate revenues of £400 million”.

Yesterday (January 9), another trademark was filed for SUSSEX ROYAL – this time at the EUIPO and by an Italian resident called Ui Phoenix Kerbl. The trademark also covers six classes, although they are for different goods and services (toiletries, jewellery, luggage, toys, soft drinks and alcoholic beverages) than those that the Royal pair has sought. As to the applicant, he appears to be an Italian designer based in Bolzano, Italy, who has also lodged multiple applications in the past month for the term ÖTZI (the name of a naturally mummified man currently housed in a museum in Kerbl’s hometown).

So why has Kerbl acted now? WTR has reached out to the designer for information on his intentions for the mark, but presumably the answer is opportunity. The global press went into overdrive on Wednesday following the couple’s announcement that they plan to step back from senior roles in the Royal Family and become financially self-sufficient. The news sparked widespread global discussion, with speculation rife about a riff between the pair and Buckingham Palace. As with any global news story, especially one dominated by a brand name or phrase, it was ripe to be capitalised on through unauthorised trademark applications – activity of which we have seen many times before (eg, JE SUIS CHARLIE, MH370, CECIL THE LION and OK BOOMER).

Luckily for the couple, they have already filed for a trademark that could make any potential opposition easier. In fact, their UK application was itself lodged last year after another third-party attempt to secure a SUSSEX ROYAL trademark at the UK Intellectual Property Office, filed around the time that the official Sussex Royal account launched on Instagram (and was subsequently rejected).

The UK trademark registration could thus have been seen as partially a defensive move by seeking to secure protection for the term after another party had sought to do so. It could also be viewed as divorced from a global commercial plan. As Mishcon de Reya’s Sally Britton told The Guardian, those planning major international launches tend to initiate an international filing programme, rather than one centred on a single jurisdiction. With the couple planning to spend half their time in the United States going forward, there is little doubt that their plans are international.

However, the move was arguably a shrewd and commercially thought-out one. As evidenced by this week’s media hysteria following the couple’s announcement, any effort to initiate a global prosecution programme would have created a snowball of coverage and speculation related to their plans. Perhaps, then, it was better to apply for initial rights related to the Sussex Royal brand in the United Kingdom and, with those rights secured, expand the filing programme when ready to play their hand. Such an approach can create challenges, but sometimes it is the right strategic move. Exhibit one? Baby Yoda.

Following the launch of TV series The Mandalorian, The Walt Disney Company encountered a spike in counterfeiting by failing to secure the rights to terms and designs associated with the series’ infant Yoda character. However, Disney CEO Bob Iger subsequently explained the reason for not previously seeking trademark registration as a tactic to keep the character concealed from audiences for as long as possible: “If we had given the design out, it would have gone out to hundreds and hundreds of people, probably all over the world, and we didn’t want to do that.”

Sometimes, then, secrecy and sleight of hand matter – particularly for those who find their every move under public and media scrutiny.

At present, speculation is the order of the day; it is reported that the Royal Household was taken by surprise by the announcement and media outlets are scrambling to bring new takes on this unprecedented occurrence. On the trademark front, question marks also exist over whether the couple’s use of the term ‘Royal’ in their brand name. As The Guardian suggested yesterday, the Queen could “refuse to give consent to the use of ‘Royal’ in future trademark applications by the couple”. Clearly, there is much to be ironed out before Harry and Meghan are free to step back from senior royal duties.

Three things, though, are known for sure. First, trademarks will continue to play an important part in this story. Future trademark applications will provide clues to the couple’s plans, and, as we reported previously, there have been numerous attempts to capitalise on the Royal Family’s fame, including efforts to register MEGHAN MARKLE as an EU trademark, meaning that brand vigilance will now be of greater importance to the two. Second, whether part of a grand plan or not, the couple will have been well advised. And, finally, it may be some time before we get the true inside story.

WTR has reached out to Harry and Meghan’s media representative for further information.

Tim Lince

Author | Senior reporter

[email protected]

Tim Lince

Trevor Little

Author | Editor

[email protected]

Trevor Little