International Trademark Registration: Nine Lessons from Harry and Meghan
“The Trademark renewal problem faced by the Duke & Duchess of Sussex is now a warning story for IP owners and helps to highlight important principles of international trademark registration.”
The company’s trademark, which includes its name, logo and color, is one of the most valuable assets. A trademark or service marks establishes your company’s source of certain products or services (trademark). This establishes your company brand and allows customers to recognize it. When we think about international trademark registration, we can draw some valuable lessons from the Duke and Duchess, who attempted to register a SUSSEXROYAL trademark.
How did Harry’s and Meghan’s mark evolve? Let’s look at how Harry and Meghan got the Sussex Royal title. It is a custom for English princes to get a new title upon their marriage. They may be given Duke status, which is the highest rank in British peerage. Princes of royal blood hold this title. After Harry’s 2018 wedding, the queen bestowed the title “Duke” on Harry. Meghan was then made Duchess. The royal titles were a sign of the work they would do for Britain’s crown. Multiple trademarks were registered by the couple under the “Sussex Royals” name in the third quarter 2019.
However, in December 2019, the couple declared that they would be retiring as royals despite having multiple trademark applications pending for their royal title. The couple renounced their duties as well as their royal title and faced serious problems with their trademark applications. It was not surprising that the couple withdrew all their trademark applications. The couple’s experience is now a warning sign for IP owners. It highlights the essential basics of international IP registration. Here are the basics of international trademark registration.
Lesson 1: Perform a Trademark Clearance search in your Home Country and at an International Level.
Trademark clearance searches must be conducted in your own country. If a company intends to expand internationally, it should consider international search options. The U.S. legal team can perform a search in conjunction with a trusted third-party search company. This will provide a trademark clearance opinion and letter. Worldwide Identical Screening search (WISS) can be a very useful tool for global searches. WISS, although it can only identify current and identical marks, is able to identify potential conflicts for your mark. You can also search EU trademarks at the EUIPO’s site. It is unclear whether a thorough search for the Sussex Royal trademark was conducted because there were several other pending applications of the same name when Harry and Meghan filed.
LESSON 2. A trademark must accurately and truthfully portray your company’s current product/service.
A trademark must accurately represent the current products or services of your company. Registering a mark with misleading matter is not allowed. If the clothing is made of rayon, a clothing manufacturer cannot trademark SUPER SILK. In the same way, Harry and Meghan decided not to be considered working royals (Harry requested not to be called “Duke”) so the use of “Royal” in a trademark could be construed as deceptive. This presented problems for their application.
Also, you should consider the visual and literal meanings of each mark in any foreign country where registration is sought. What is your mark’s literal translation? Are there cultural connotations to the mark? Chevrolet’s Spanish-speaking customers have a great story to tell. Nova means “new” in English. However, the literal translation to Spanish of “no”, “va” is “it doesn’t go.” This story shows that it is crucial to clearly communicate your brand. You must know how the target area will perceive the meaning of the mark.
Lesson 3: Choose Goods and Services that Communicate a Clear Message To Consumers
All trademark applicants must identify goods and services for protection. International trademarks should choose goods and/or services that communicate the same message. To communicate a clear brand message, even if multiple products are being offered, it is important that they all be variations of the same theme. The Sussexes sought to protect an eclectic mix goods and services. These included charitable fundraising and luxury merchandise.
The trademark must accurately reflect your company’s products. It is important to have an idea of the products and services that you want to sell using your trademark. If you are a U.S. applicant, register the mark at the U.S. Patent and Trademark Office. The USPTO registration will provide your trademark legal protection in the domestic market and allow you to start the foreign registration process. US companies use the USPTO to register their home country and for filing foreign registrations. The Madrid Protocol, and the Paris Convention are the two most commonly used foreign trademark registrations.
Lesson 4: Do not reveal your plans to file an International Trademark Application during the Filing Process.
Before you announce your intention to file your trademark applications, make sure you do it well in advance. This will minimize the likelihood that others will claim your IP and prevent you from moving forward in the registration process. Harry and Meghan were eager to share their plans via social media. Six people filed USPTO registrations of Sussex Royal prior to the couple. You can file a Section 1 (b) Intent of Use in the U.S. if your trademark has not been used in commerce. This will protect your mark from being used to sell goods or services.
Lesson 5: Identify the country where you wish to register your trademark.
Once a strong national trademark has been registered in your home country, you can now look at foreign countries in which you want to register. International trademark registration is country-by country. Although some companies want to register anywhere in the world, this can be costly and may not be necessary. You can register the entire world if you wish, but there is a separate trademark procedure for obscure locations like the Holy See in Rome, Falkland Islands, and Vatican City. Companies and individuals may want to be specific about a region. They can choose where their majority of goods will be sold, used or exported. If your company is located in Europe, you will need to examine IP treaties between America and Europe before you register in China or Japan. Even though many IP registration agreements collaborate with other regions so that your registration will be eligible for coverage in other nations, you should still take a country-by country approach to the process. Harry and Meghan faced competition from several other countries who filed Sussex Royal trademark application.
LESSON 6. Identify which Treaty applies to your registration and file within six month of your home country.
You can use the Paris Convention to guide you if you’re a U.S.-based company that plans to register in Europe. The Paris Convention allows you to use a USPTO registration for a trademark as the basis of filing in any of its 177 member states. This treaty, which has been in force for many years, provides two important trademark rights to its members.
First, let’s talk about the principle ofNational treatmentAny member nation is required to grant the same intellectual rights to citizens of other member nations as it grants to its citizens. You will get the same protections granted to trademark owners in France if you file a trademark registration application in France. Second,Principia of priority rightsIf the foreign registration is filed within six month of the USPTO registering your trademark in the U.S., it will be eligible for a fee.
This means that, if you file a foreign registry with any member of Paris Convention within six month of filing with USPTO the filing date of your foreign register will be the USPTO’s filing date. This gives priority for the use of your trademark. Harry and Meghan could have filed in the U.S. in six months from their UK filing. This would give them priority over others with similar marks in the U.S. It is not clear that Harry and Meghan did it, and they would have been in trouble if they hadn’t withdrawn their applications.
LESSON 7 – Hire U.S. Trademark Counselors and Legal Counsel in the Target Country.
If a trademark is to be applied for internationally, it is important that the person or company seeking to register the mark hires local counsel in the destination jurisdiction to help with the process. It is possible to see if registration can be made in other countries using the Madrid Protocol. The Madrid Protocol, which is the second main legal framework for international trademark registration, is also important. This international system allows for one international trademark registration. The Madrid Protocol may be extended to countries or regions not already covered by the Madrid Protocol. To register in the U.S., foreign trademark registrants must have legal representation. Remember to consult with legal counsel in your target jurisdiction in order to ensure that the rules applicable to each country are followed under the Madrid Protocol.
The Madrid Protocol permits broad registration. It relies on the statutory case laws of local jurisdictions and allows applicants to obtain protection in up to 122 participating jurisdictions. A single application can be filed to register a international trademark as long as the applicant has submitted a trademark application in a relevant office of origin. Fees vary according to the number of classes of goods or services. However, it is possible to pay all fees by filing one single application.
LESSON 8 : Register after the U.S. Register, and Submit Applications to World Intellectual Property Organization (WIPO).
If you have a U.S.-issued trademark application and you meet certain requirements, USPTO will forward the application to the World Intellectual Property Organization (WIPO) for review. Harry and Meghan used the UK trademark application to file their U.S., Australia and Canada applications through WIPO. Their UK registration was filed on June 21st 2019, so they had six months for filing in Paris Convention countries to get their original filing date. This filing opportunity was missed if they did not file their UK registration by December 21, 2019.
WIPO issues a certificate of registration. The jurisdictions that the applicant is seeking trademark protection conduct a substantive exam. The entire process takes between 12 to 18 months. If granted trademark registration will remain valid for 10 year. Each participating jurisdiction can renew or transfer a registration by filing one single document and paying one fee. the Madrid System offers a simple and cost-effective method to obtain international trademark protection using a centralized system. Although the Madrid Protocol is one regional treaty, you should also check to see if any other international treaties might apply in your target country.
Lesson 9: Conduct Due Dilligence After You REgister a Mark to Prevent Infringement or Conflicts.
No matter where your trademark is filed, you must exercise due diligence in order to ensure no other person attempts to use it. You must exercise reasonable care after registration to ensure that no one else in the country is using your trademark or infringing on it in any way. Failure to prosecute trademark infringements could result in ownership challenges.
Harry and Meghan have learned a lot from their mistakes. You should follow every step of the process and seek out qualified IP lawyers in the U.S. or abroad. Contact us to receive a complimentary legal consultation or for additional questions.