Duke and Duchess of Sussex apply for trade mark protection

Stepping back from what is colloquially referred to as the Firm (though IIRC it was Her Majesty herself who first used the expression) evidently involves turning to trade mark law for protection. It was always available to them, but surely the Royal family doesn't need anything so mundane? Perhaps the Sussexes' application to register SUSSEX ROYAL (application number 3408516, and also 3408521 which has a reference to their Foundation tacked on) as UK trade marks, reported inter alia by The Guardian here, is indicative of their departure from the core of the Royals (although other reports today suggest that they aren't going to find it very easy to get away).

They were apparently prompted to apply when someone else filed an application. I don't think it's necessarily right to refer to it as "squatting" because it's hard to imagine the owner trying to extract payment from the Royal couple. "Troll" seems like a better term. That application failed, however, because of s.4(1): the words would be

(d) ... likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation,

... unless it appears to the regstrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.

I have dealt in the past with a very few trade mark applications that required Royal consent (in practice, the consent of the Lord Chamberlain, the most senior officer of the Royal Household, the route to whom is via the Queen's solicitors, Farrars, who will again IIRC impose a modest charge). Surprisingly, even if an organisation is incorporated by Royal charter or has the word "Royal" in its name with the monarch's approval it still needs further consent to satisfy the registrar. Given that the registrar is a servant of the Crown, should not he or she be trusted to oversee the whole process?

Be that as it may, the new application raises an intriguing question. Will the registrar be satisfied that the requisite consent has been given? The application was originally filed by two of the couple's "people", and later assigned to the Foundation, so the applicants have never been the Royals themselves. Nevertheless, it might be reasonable to infer that their Foundation acts with their consent. But does that suffice, or does s.4(1) (and s.3(5), which makes this an absolute ground for refusal) give Her Majesty a veto? The conjunction used is "or" not "and", so perhaps Prince Harry did not need to ask his grandmother: but equally, his grandmother could have given consent and he would not have been able to veto it. But the tricky element of the trade mark is the word ROYAL, which isn't specific to the Sussexes - so consent from on high would be necessary.

The register shows that it took a long time (some six months) for the application to get as far as being published. However that seems to have been time taken up with assigning the application and dealing with the specification, not worrying about consent, which isn't mentioned.

There's also another interesting question, though perhaps unlikely to arise: if the application were to cover potatoes, which it doesn't, would it conflict with the Protected Designation of Origin JERSEY ROYAL? There is probably no reason why similar potatoes should not be grown in Sussex.

Now there is news (see The Guardian today, 11 January) of another troll application, this time for an EU trade mark - against which the same objection based on the word ROYAL would not run. If it isn't a bad faith application one wonders what would be, but bad faith is a difficult area of trade mark law (though it should be somewhat clearer after the Court of Justice opines in Sky v SkyKick, about which see my recent posting dated 16 October). But the Foundation is going to have to oppose it to get anywhere.

B&O loudspeaker shape cannot be registered as trade mark

The directive and the regulation both say you cannot register as a trade mark a shape that gives substantial value to the goods to which it is applied. In Case T-508/08 Bang & Olufsen v OHIM the General Court applied this rule to uphold the Office's refusal to register the shape of its speakers.

And quite right too. That provision has always caused me a little worry, as the whole point of applying a trade mark - any sort of trade mark - to goods is to enhance their value. A plain unmarked bottle of brown fizzy liquid is worth little: make the bottle curvaceous and apply a Coca-Cola (or Pepsi) label and it's a different story. But just because the law might be difficult to apply in extreme cases doesn't mean it is wrong.

The B&O case has a long history. Their application, filed in 2003, was refused as being devoid of any [sic] distinctive character. (This "devoid of any" formation grieves me - surely the "any" is redundant, as "devoid" means having none at all, without the need to reinforce it.) The Court then upheld their appeal, sending the case back to Alicante, where it was refused again but this time on the grounds that the shape gave substantial value to the goods. You have to acknowledge the applicants' persistence, because they set off on another expedition to Luxembourg to get that straightened out too.

Except that the court did not oblige:

The Court finds that in the present case the shape for which registration was sought has a very specific design. In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and online auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point. Accordingly, the Court holds that OHIM did not make any error in finding that, independently of the other characteristics of the product at issue, the shape for which registration was sought gives substantial value to that product.

The court also noted that it was perfectly OK for the Office to work through the absolute grounds for refusal one after the other, as they are independent. The result: no trade mark protection for the shape. I know it looks pretty distinctive, and B&O thrive on the appearance of their products, but the interface between design protection and trade mark protection is one that has to be guarded carefully. These same loudspeakers - the designs for them - can be protected for 25 years as designs, and if that is considered to be the right period of protection then whose interest would be served by permitting them to be protected by the trade mark system too, potentially for ever?