A number of national newspapers recently wrote excited articles about the apparent registration of the title of the Duchess of Cambridge, the former Kate Middleton, as a trade mark for clothing.  However, the suggestion of the launch of a range of 'Duchess' clothing from the most sartorially successful member of the Royal family is swiftly dismissed when the trade marks which have in fact been registered are considered in detail.

Princes William and Harry established 'The Foundation of Prince William and Prince Harry' as the main vehicle for their charitable activities, in 2009.  When Prince William married Kate Middleton in 2011, she also became a patron of the foundation which was renamed 'The Royal Foundation of the Duke and Duchess of Cambridge and Prince Harry'.  The foundation, since its change of name, has engaged in a programme of international trade mark protection which covers the EU, US, Australia and New Zealand.  The mark which caused the excitement appears to be CTM Registration No.11033958 THE ROYAL FOUNDATION OF THE DUKE AND DUCHESS OF CAMBRIDGE AND PRINCE HARRY which covers the following goods and services:

Class 25: Clothing, footwear, headgear
Class 36: Charitable fund raising; management of charitable funds; financial grant making
Class 41: Educational activities; cultural activities; organising of events; publishing, including electronic publishing
Class 45: Licensing of intellectual property.

The main activities of the foundation are those of fundraising and education but the inclusion of the class 25 goods has been explained as necessary in case, at some stage, the Foundation decides to produce t-shirts for one of its events.   It does not appear that a broader range of such goods is anticipated.

The mark is clearly the name of an organisation and although it includes the titles of both the princes and the Duchess, its registration must be seen as offering rather limited protection against the use of any of those titles alone by a third party.  Thus it is something of a leap of logic to suggest that by means of this registration the Duchess' name has been protected as a trade mark for clothing.

Since the mark has been registered as a Community Trade Mark rather than a UK trade mark the applicant was not obliged to state an intention to use the mark at the time of filing.  However, if the mark is not put to use in relation to clothing items within five years of registration it will be vulnerable to cancellation for non-use by third parties.  Similarly, if the mark cannot be proved to be in use in the US within five years of its registration there, it will be removed from the register. The clock is ticking for the Foundation.

It does not appear that the Duchess is planning to supplement the civil list with a second career as a clothing designer at least for the present.  However with her baby due in a few months and her media profile higher than any member of the Royal family since Princess Diana, it is an appropriate time to examine how she can prevent her name and image from being exploited by others.

The Trade Marks Act 1994 includes a number of special provisions designed to protect the Royal family.  Section 4 (1) of the Act states that "a trade mark which consists of or contains...(c) a representation of ...any member of the Royal Family, or any colourable imitation thereof, or (d) words, letters or devices likely 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 ....the relevant member of the Royal Family".  The Trade Mark Registry provides a helpful list of the members of the Royal Family in its Work Manual.  A second means of preventing the registration of marks which suggest an allegiance to the Duchess might be on grounds of bad faith under section 3(6). This section would be relevant if an association with the Duchess was suggested by the mark.  An example of a bad faith refusal in practice appears to be the refusal of UK Trade Mark Application No. 2565314 PRINCESS CATHERINE.  This application was filed after the engagement of Prince William and Kate Middleton but before their marriage when she was not a member of the Royal family.  Based on current legislation, it seems unlikely that any third party could obtain registered rights in the Duchess's name or image at least in the UK.

The prevention of third parties gaining registered rights in marks associated with the Duchess is, of course, significant. However, it is, arguably, of less importance than the prevention of the use of images, names and titles belonging to the Duchess of Cambridge by organisations seeking commercial benefit from a presumed connection with her because of the damage such use could cause to the Royal Family.

One way of protecting herself against such activities would be, of course, for the Duchess to register her own trade marks and either use them herself or licence them to third parties for use in relation to approved goods and services.  This is not an approach generally favoured by the Royal Family.  A perception that a member of the Royal Family is 'cashing in' on their status is not popular.  Neither is it possible to file a purely defensive application in the UK since a bona fide intention to use the mark as filed is required in order to avoid cancellation.  Although that intention to use is not required for a Community Trade Mark Application some genuine use of such a registration would be required to avoid vulnerability to non-use cancellation thus placing the Duchess in the position of needing to commercialise her mark.

It is interesting to note that a number of trade marks including Community Trade Mark Registration No.0630566 Diana, Princess of Wales, covering a wide range of goods and services were registered in the immediate aftermath of the Princess' death by the executors of her estate.  Presumably their intention was to avoid any unsavoury 'cashing in' on the Princess' death.  The mark has now been allowed to lapse.  The assumption must be that the owners of the mark felt that they had struck the correct balance between protecting the Princess' memory and exploiting it themselves.  Another notable exception to the Royal absence from the trade mark register is UK Trade Mark Registration No. 2103197 The Duchess of Windsor Collection registered for jewellery by Hyde Park Residence Limited in 1996.  In this case registration was well after the death of the individual concerned.

So, without any personal registered rights, what action could the Duchess take?  An action for passing off might be possible.  The three requirements of passing off are that the Duchess had acquired goodwill in whichever mark was used, that the other party had misrepresented themselves to suggest an association with the Duchess and that she had suffered damage as a result.  Unfortunately for the Duchess of Cambridge, the relevant goodwill is that which arises from trade, it has been defined as 'the attractive force which brings in business'.  So in order to rely on passing off she would first have to have commercialised her trade marks.

It is interesting then to contrast the position of the Duchess of Cambridge with that of "ordinary" celebrities.  The current trend among celebrities for 'brand extension' by using their names to endorse products beyond their original field of activity has meant a rise in the number of celebrities registering their own names as trade marks.

Unhindered by the commercial restrictions racing the Royal Family, singers as diverse as Adele, Mick Jagger and Cliff Richard, sports people such as Mo Farah and Jessica Ennis and reality TV stars such as Kim Kardashian all have trade mark registrations for their own names covering goods ranging from the predictable clothing and perfumery to, in the case of Mick Jagger, restaurants and pin ball machines.

There are few restrictions on the registration of famous names as trade marks.  Under UK Trade Mark Practice applications may be refused if the goods in question are likely to be seen as badges of allegiance rather than goods originating from the celebrity in question and third party applications to register famous names may be refused on grounds of bad faith under Section 3(6) of the Trade Marks Act. Similarly, once a celebrity is using their name in trade goodwill is acquired and, even if the name is not registered as a trade mark, redress can be sort under the tort of passing off.

At first sight then ordinary celebrities appear to be in a better position to protect the use of their name and the possible damage to their reputation by third parties than do members of the Royal Family.  However, perhaps unsurprisingly, the Royal Family in fact enjoys a degree of protection not available to anyone else.  The Lord Chamberlain's office which has the responsibility for the ceremonial and legal aspects of the British monarchy issues guidance on use of Royal Arms, Names and Images which simply states that "Using Royal names ... on products, ...is illegal if the use of the name suggests the goods have some connection with or are supplied to a Member of the Royal Family".

This guidance appears to be derived from Section 12 of the Trade Descriptions Act 1968 which states that "If any person, in the course of any trade or business, gives, by whatever means, any false indication, direct or indirect, that any goods or services supplied by him or any methods adopted by him are or are of a kind supplied to or approved by Her Majesty or any member of the Royal Family, he shall, subject to the provisions of this Act, be guilty of an offence".

It appears that if you have connections in high enough places the ordinary considerations of trade mark law need not necessarily apply.

Top tips for avoiding the Tower:

  1. As in every case undertake full trade mark availability searching before commencing use of a mark
  2. If there are 'royal' connotations to a proposed trade mark refer to the list provided in the IPO work manual to ensure that the proposed mark is not the name of a current member of the Royal family
  3. If the proposed trade mark is a real name which is not registered as a trade mark be as thorough as possible in performing 'in use' searches to ensure that it is not the name in which goodwill has been acquired which could give rise to a claim in passing off.

First published in Intellectual Property Magazine, June 2013

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