Robbery to the Crown: The case of the SUSSEX ROYAL trademark - How to defend your trademark against bad faith registration applications?

In June of last year, you could already perceive signs of the step down that the Dukes of Sussex, Meghan and Harry, were going to take, away from their royal duties.

One of these signs, which may have gone unnoticed by the public, was the filing of two trademark applications in the United Kingdom to protect the SUSSEX ROYAL mark on behalf of the Sussex Royal Foundation of the Duke and the Duchess of Sussex. With that trademark, they intend to obtain exclusivity on products such as publications, clothing items, accessories and promotional products, as well as charity fundraising, education and social services. 

What they probably had not anticipated, is that in just 15 days after the announcement of their independence from the crown, bad faith applications to obtain the SUSSEX ROYAL trademark would multiply in several countries. To date, we can observe about 20 applications filed on behalf of individuals or organizations that have no association with the Dukes in eight countries. Considering that the application made on behalf of the Foundation will only grant protection in England, they now face an issue that many entrepreneurs already know: How to act in case of bad faith applications? 

In these cases, we can appreciate the relevance of the Paris Convention, an international treaty for the protection of trademarks adopted in 1883 and signed by 177 countries, and in particular articles 6bis and 6septies.

 Article 6bis provides in its first paragraph that The countries of the Union undertake to refuse or invalidate the registration and prohibit the use of a trademark that constitutes the reproduction, imitation or translation of a trademark considered by the competent authority of the country of registration or use to be well known in that country and used for identical or similar products.

 The Sussex Royal Foundation may then, proving that the SUSSEX ROYAL mark has acquired the status of a notorious trademark, prevent or cancel the registration in the vast majority of jurisdictions. However, they will have to act within a maximum period of 5 years to benefit from article 6bis. We consider that considering the level of media exposure and interest that the couple has, this requirement could be met almost in any country in the world. 

Article 6septies may also be invoked if the person who has applied for the trademark registration in bad faith is a representative or agent of the Dukes of Sussex in the country where the application is filed. Furthermore, in most jurisdictions there is a ground for rejection when it the bad faith of the applicant can be established, even if there had not been any direct exchange with the legitimate owner.