A right royal battle for distinctiveness

Intellectual property is the area of law used by commercial entities to differentiate their goods and services in the marketplace. One of the ways this differentiation can be achieved is through branding, protected via trademarks. Indeed, one of the essential criteria for a trademark is a sign capable of distinguishing goods and services as a “badge of origin” for consumers.

Image by Pexels from Pixabay

Richard and Maurice McDonald from San Bernardino, California may have been experts at churning out hamburgers and French fries quickly, cheaply and consistently under their “Speedee Service System”, but they had little if any regard for intellectual property. Working with local craftsmen they invented a new spatula, dispenser (squirting the same amount of ketchup and mustard every time) and rotating platform to speed up the assembly of the burger, bun and condiments, none of which enjoyed patent protection or were appreciated for their trade secrets potential. It was left to the more IP astute Ray Kroc, their milkshake machines salesman, to encourage and expand their domestic franchising operation under the protection of trademarks. After purchasing the McDonald brothers’ equity in the company, Kroc used his control over the trademarking portfolio as the springboard for the global franchising operation we all know today. Ultimately driven out from the fast-food industry by the very business that bore their family name, the McDonald brothers’ story is a salutary lesson in IP astuteness.

Image by Alfred Derks from Pixabay

UK company number 07033553 tells the tale of two even more famous brothers. Incorporated in 2009 as “The Foundation of Prince William and Prince Harry” following the marriage of Prince William it went on to become “The Royal Foundation of the Duke and Duchess of Cambridge and Prince Harry” in 2012, and following the marriage of Prince Harry “The Royal Foundation of the Duke and Duchess of Cambridge and the Duke and Duchess of Sussex” in 2018. But after Prince Harry disclosed in an ITV documentary that he and his older brother were on “different paths” the company has since reverted to “The Royal Foundation of the Duke and Duchess of Cambridge” (from the 6th September 2019). This company has been IP astute in applying for/registering trademarks to protect its name, as well as “The Royal Foundation” brand. In addition to the UK, trademark protection has been secured as far afield as Australia, Canada and Europe.

Image by Steve Watts from Pixabay

The recent decision of the Duke and Duchess of Sussex to withdraw from royal duties may have created a “mini-abdication crisis” but with speculation now turning towards likely future commercial dealings, their trademarking activities are now coming to the fore. So what insights do these trademarking activities offer?

Distinguishing features

The Duke and Duchess of Sussex have been Directors of “Sussex Royal the Foundation of the Duke and Duchess of Sussex”, a private limited company by guarantee (Company Number 12077679) since its date of incorporation on 1st July 2019. Two UK trademark applications have been made on behalf of this company for “Sussex Royal” as well as protecting the company name.

International coverage

Following the announcement of the withdrawal from royal duties, two further applications have also now been made under the Madrid system (the system for registering international trademarks in up to 90 countries) in respect of the company name and the brand “Sussex Royal”. It is reported that international trademark applications have been filed under these applications for Australia, Canada, Europe and the United States.

Comprehensive monopoly rights are being claimed

Legal protection has been sought and registered for the Duke and Duchess of Cambridge under “The Royal Foundation” for:-

  • Clothing, footwear, headgear.
  • Charitable fund raising; management of charitable funds; financial grant making.
  • Educational activities; cultural activities; organising of events; publishing, including electronic publishing.
  • Licensing of intellectual property.

In comparison “Sussex Royal” seeks to duplicate all of these and far more:-

Goods

  • Printed matter; instructional and teaching materials; printed educational materials; printed publications; books; educational books; textbooks; magazines; newspapers; newsletters; periodicals; printed reports; fact sheets; brochures; programmes; booklets; pamphlets; leaflets; manuals; journals; diaries; calendars; posters; art prints; notebooks; postcards; greeting cards; paper and cardboard; photographs; stationery and office requisites, except furniture; artists materials; pens; pencils; book marks; activity books.
  • Clothing; footwear; headgear; t-shirts; coats; jackets; anoraks; trousers; sweaters; jerseys; dresses; pyjamas; suits; sweatshirts; hooded tops; caps; hats; bandanas; headbands; socks; scarves and neckwear; gloves; sportswear.

Services

  • Campaigning; promotional and public awareness campaigns; marketing and promotion of charitable campaigns; promoting charitable fundraising events; developing charitable campaigns for others; developing and coordinating volunteer projects for charitable purposes; providing volunteering opportunities and recruitment of volunteers; organising and conducting community service projects; information, advisory and consultancy services relating to the aforesaid services, all of the aforesaid services also provided online via a database or the Internet.
  • Charitable fund raising; management of charitable funds; financial grant services; financing of projects; charitable foundation services, namely, providing fundraising activities, funding, scholarships and/or financial assistance to those in need; charitable collections; management of charitable funds; information, advisory and consultancy services relating to the aforesaid services, all of the aforesaid services also provided online via a database or the Internet.
  • Education; providing of training; sporting activities; cultural activities; arranging and conducting educational events; arranging and conducting of conferences, conventions, exhibitions, classes, lectures, seminars and workshops; organisation of webinars; health and wellness training; education and training relating to nature, conservation and the environment; organising youth training schemes; career and vocational counselling; training relating to employment skills; personal development training; team building (education); organising sporting events and competitions; sports coaching services; providing sports facilities; training of sports coaches; arranging and conducting cultural events; arranging and conducting of entertainment events for charitable purposes; social club services for entertainment purposes; arranging and conducting award ceremonies; publishing; electronic publishing; non-downloadable electronic publications; news reporting; information, advisory and consultancy services relating to the aforesaid services, all of the aforesaid services also provided online via a database or the Internet.
  • Social care services namely organising and conducting emotional support groups; counselling services; emotional support services; provision of personal support services to help, care for and support persons in need, namely companionship services; charitable services, namely mentoring and personal care services; licensing of intellectual property; information, advisory and consultancy services relating to the aforesaid services, all of the aforesaid services also provided online via a database or the Internet.

We await the outcome of these applications, but for the time being at least in those areas (as underlined above) where the work of the respective Foundations overlap consumers should view “The Royal Foundation” as the brand of the Duke and Duchess of Cambridge and “Sussex Royal” the new future brand of the Duke and Duchess of Sussex.