“The trademark ordeal faced by the Duke and Duchess of Sussex, now a cautionary tale for IP owners, helps highlight some important basics of international trademark registration.”
One of a company’s most valuable assets is its trademark – its name, logo, color or slogan. A trademark or service mark establishes your company as the source of certain products (trademark) or services (service mark). This helps establish your company brand so consumers can easily recognize it. As we consider international trademark registration, there are some important lessons we can learn from the Duke and Duchess of Sussex, who tried to register a SUSSEX ROYAL trademark.
How did Harry and Meghan’s mark develop? Let’s start with how Harry and Meghan obtained the Sussex Royal title. It is a tradition for men in the English royal family to receive a new title when they marry. They often take on Duke status, the highest status in British peerage. Those who hold the title are princes of royal blood. After their 2018 wedding, the queen of England bestowed on Harry the title “Duke of Sussex,” and Meghan thus became Duchess of Sussex. The royal titles indicated the high-level of work they would do for the British crown. In the last quarter of 2019, the couple registered multiple trademarks under the “Sussex Royal” name.
In December 2019, however, the couple announced they would be stepping down as royals even while they had multiple trademark applications pending based on their royal title. Because they renounced their duties and royal title, their trademark application faced serious challenges. It came as no surprise when the couple recently withdrew their trademark applications. Their ordeal, now a cautionary tale for IP owners, helps highlight the important basics of international IP registration. Here’s what you need to know to register an international trademark.
LESSON 1: Complete a Trademark Clearance Search in Your Home Country and at the International Level.
Trademark clearance searches should be completed in your home country. If a company plans to expand abroad, then it should look at international search options. U.S. legal counsel, in conjunction with a reliable third- party search company, can complete a search and should provide a trademark clearance opinion letter. Worldwide Identical Screening Search (WISS) is a helpful global search. Although limited in that it only identifies current and completely identical marks, WISS can identify potential conflicts for your trademark. You may also search EU trademarks on the EUIPO’s website. It is unclear if a thorough search was done for the Sussex Royal trademark because when Harry and Meghan filed, there were already several other pending applications with the same name.
LESSON 2: A Trademark Must Accurately and Honestly Represent Your Company’s Current Product or Service.
A trademark must accurately and honestly represent your company’s current products or services. A mark with deceptive or misleading matter cannot be registered. For example, a clothing manufacturer cannot trademark a clothing line SUPER SILK if his goods are made of rayon. Similarly, because Harry and Meghan no longer wished to be considered working members of the Royal Family (Harry has asked not to be called “Duke”), the couple’s use of “Royal” in a trademark could be considered deceptive. This posed problems for their application.
You should also consider the visual and textual meanings of your mark in each foreign country where you plan to apply for registration. What is the literal translation of your mark? Does the mark have culture-specific connotations? Chevrolet’s experience marketing the Nova automobile in Spanish-speaking countries provides a classic cautionary tale. While Nova connotes “new” in English, the literal translation of “no” “va” in Spanish is “it does not go.” The moral of the story is that it is important to communicate your brand clearly. One must understand how the target region will understand the meaning of your mark.
LESSON 3: Select Goods and Services to Communicate a Clear Message to Consumers.
All trademark applicants are required to identify the goods and services for which they seek protection. Also, international trademarks should select goods and services that communicate a consistent message. Even if there are multiple products, they should be variations on the same theme in order to broadcast a clear brand message to consumers. The Sussexes sought protection for an eclectic mix of goods and services, from charitable fundraising to luxury merchandise, resulting in a proposed brand with serious internal conflicts.
A trademark must accurately represent your company’s products or services. Have a clear idea of what you plan to sell under that trademark. If you are a U.S. applicant, then register the mark with the U.S. Patent and Trademark Office (USPTO). The USPTO registration will give your trademark domestic legal protection and allow you to begin the foreign registration process. U.S. companies mostly use the USPTO as their home country registration and as the basis for filing any foreign registrations. Two of the most common foreign trademark registrations are the Paris Convention and the Madrid Protocol.
LESSON 4: Keep Your Plans to File an International Trademark Quiet During the Filing Process.
Always file your trademark applications well before you announce that you will do so. This will limit the chances that others will commandeer your IP before you can move along in the registration process. Harry and Meghan were too eager to announce their plans on social media, and at least six people filed USPTO registrations for Sussex Royal before the couple did. In the U.S., if you have a trademark that you have not used in commerce, you may file a Section 1(b) Intent to Use, which will protect your mark before you begin selling goods or services.
LESSON 5: Identify the Country in Which You Want to Register Your Mark.
After a strong domestic trademark is registered in your home country, a company can then look at foreign locations in which they want to register. International trademark registration is a country by country process. Some companies may want to register everywhere in the world, yet that can be an expensive and perhaps not entirely necessary endeavor. If you want to cover the whole world, do you know that there is a separate trademark process for even the most obscure locations, such as the Holy See in Rome or the Falkland Islands? Companies or individuals want to focus on one region at a time and can do so based on where the majority of their goods will be sold, used, or exported. If that is in Europe, then your company will want to look at IP treaties between the U.S. and Europe before registering in a country such as China or Japan. Although several IP registration treaties collaborate with other regions, and registration with them will qualify you for coverage in other countries, you must still look at the process on a country by country basis. Harry and Meghan had competition because individuals in several countries filed Sussex Royal trademark applications.
LESSON 6: Identify Which Treaty Applies to Your Registration and File Within Six Months of Your Home Country.
If you are a U.S. company and you plan to register in Europe, you can look to the Paris Convention for guidance. Under the Paris Convention, you can use a USPTO trademark registration as the basis for filing in any of the 177 member nations of the Paris Convention. This long-standing treaty provides member nations with two important trademark rights.
First, the principle of national treatment requires any member nation to grant the same intellectual property rights to citizens of any other member nation that it grants to its own citizens. If, for example, you file for trademark registration in France, you will be granted the same trademark protections as a French citizen. Second, the principle of priority rights applies to a foreign registration if it is filed within six months of registering your trademark with the USPTO in the U.S.
This means that if you file a foreign registration with any member of the Paris Convention within six months of filing with the USPTO, the filing date of your foreign registration will be the date that you filed with the USPTO. This gives you priority for use of your mark. If Harry and Meghan had filed in the U.S. within six months of their UK filing, their U.S. filing date would have been the same as their UK filing date, giving them priority over others in the U.S. with marks similar to their own. There is no evidence that Harry and Meghan did so, and they would have faced several challenges had they not withdrawn their applications.
LESSON 7: Hire U.S. Trademark Counsel and Legal Counsel in the Target Country.
When filing an international trademark, it is imperative that the company or individual seeking to register hire local counsel in the target jurisdiction to assist with the process. You may see if registration in additional countries is possible based on the Madrid Protocol. The Madrid Protocol is the second major legal framework for foreign trademark registration. This is an international system that allows you to file a single international trademark registration that may be extended to countries and regions that have joined the Madrid Protocol. In the U.S., all foreign trademark registrants are required to have legal representation to register within the U.S. When working with legal counsel in the target jurisdiction, keep in mind that you will want to check the rules for each country under the Madrid Protocol member nations.
The Madrid Protocol makes broad registration possible by relying on the statutory case law of local jurisdictions, while still allowing applicants to secure protection in up to 122 participating jurisdictions, including the United States, the EU, and China. So long as the applicant has applied for a trademark in the relevant office of origin and has either an industrial or commercial establishment; a valid residency; or is a national of a country participating in the Protocol, international trademark registration can be achieved by filing a single application. Although fees vary depending on the number of classes of goods and services, all payments can be made by submitting a single collective fee to one entity.
LESSON 8: After U.S. Registration, Submit Applications to the World Intellectual Property Organization (WIPO).
After you have a valid U.S. application for trademark submitted, and if you meet certain requirements, the USPTO (for a fee) will forward your application to the World Intellectual Property Organization (WIPO), which then reviews your application. Harry and Meghan used their UK trademark application as the basis for filing in the U.S., Australia, the EU, and Canada through WIPO. Because they filed their UK registration on June 21, 2019, they had six months to file in Paris Convention countries in order to capture their original filing date. If they did not file by December 21, 2019, then they missed this filing opportunity.
Once a certificate of registration is issued by WIPO, a substantive examination is conducted by the jurisdictions in which the applicant is seeking trademark protection. The process takes approximately 12 to 18 months, and if granted, trademark registration will be valid for 10 years. Registrations can be renewed and transferred in each participating jurisdiction by filing a single document and paying a single fee. In essence, the Madrid System is a convenient, cost-effective way to obtain international trademark protection through a centralized system. The Madrid Protocol is just one regional treaty, so be sure to determine if others may apply in your target foreign jurisdiction.
LESSON 9: Conduct Due Diligence After You REgister Your Mark to Prevent Conflicts or Infringement.
Whether you file your trademark in Canada or Cambodia, due diligence to monitor if anyone else tries to use your mark is crucial. After registration, you must take reasonable care to make sure that others in the country are not using your mark or infringing upon it in any way. Failure to prosecute trademark infringers can lead to ownership challenges.
Harry and Meghan’s lessons are clear. Make sure you follow each step in the process and work with qualified IP legal counsel in the U.S. and abroad. Please contact us for a complimentary legal consult or to answer additional questions.
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2 comments so far.
Nouvelle L. GonzaloApril 14, 2020 05:17 am
Great question. There are three effective ways to monitor your IP portfolio abroad and in the U.S.
1. In-house. If you have a few marks, you can designate a team member to monitor them if they have the time to dedicate and put true focused energy on the monitoring.
2. Third Party Services. If you company does not realistically have time to monitor the marks, then hiring companies to do so is very helpful. This is especially true across jurisdictions. Some top providers include CompuMark and Corsearch.
3. Legal Counsel. If you are concerned that infringement has or will occur, then legal counsel can manage your IP portfolio while working with your team and monitoring experts to respond to possible infringers.
Feel free to contact us for a complimentary consult at [email protected]. We are glad to assist.
SCApril 13, 2020 02:49 pm
How to do due diligence to monitor if anyone else tries to use your mark?