UK: Royal Seal Of Approval

Last Updated: 27 July 2013
Article by Elizabeth Dunn

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
36: Charitable fund raising; management of charitable funds; financial grant making
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, 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

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Gowling WLG
Waterfront Solicitors LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Gowling WLG
Waterfront Solicitors LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions