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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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What's In a Name for Brand Kate?

The announcement of her engagement to Prince William has put Kate (Catherine) Middleton firmly in the media spotlight. She is said to have a magic touch when it comes to fashion, having massively boosted the sales of the dresses she has been photographed wearing. This has led to media speculation concerning the ability of businesses to exploit her name and image for their own financial gain. It has been reported that businesses have been warned by courtiers that they risk falling foul of trademark law if they use her full name on merchandise.

According to a press report, William and Kate have agreed that a more relaxed approach should be taken to the use of official pictures and coats of arms for wedding memorabilia (excluding tea towels!), but the Royal family have, apparently, emphasized that they could take action against the use of Kate's name in connection with non-wedding paraphernalia.

This article focuses on what trademark rights celebrities such as Kate Middleton, the Royal family and others may have in their names, in contrast to ordinary people,  whether and how third parties can be stopped from registering Kate Middleton's maiden name or her Royal title upon marriage as a trademark, and what action she and/or the Royal family may be able to take against the unauthorised commercialization of her name and/or title by businesses.

Names of the Non-Famous

An ordinary person who trades under his or her name could protect that name through trademark registration for the goods or services offered, provided that the name is not inherently unregistrable under Section 3 of the Trade Marks Act 1994. Common forenames for goods such as mugs and bracelets for which the name could be perceived as being merely decorative (such goods are traditionally adorned  with common forenames), for example, are normally objectionable under Section 3 (1) (b) TMA. Surnames and, to a lesser extent, full names are also objectionable under Section 3 (1) (b) if they are common in the relevant field of business. 

An ordinary person who acquires a trademark registration for his name can sue for infringement against third parties who use the same or a similar name where there is a likelihood of confusion. However, an alleged infringer may escape liability if he is simply using his own name and this happens to be the same as or similar to the registered mark. Consequently, if you are starting up a business under your own name and applying for its registration as a trademark, it is wise to consider whether that name is sufficiently unusual and distinctive that customers can recognise you by it, such that you are unlikely to lose business to other traders who do business under their own names. If you are unfortunate enough to have a common name, it may make business sense to adopt something a bit more unusual as your business name and trademark. 

How the Other Half Lives

For the rich and famous, though, special rules apply. In general, the U.K. trademarks legislation prevents the unauthorised registration by third parties of trademarks consisting of the name of a member of the Royal family. Section 3 (5) TMA prevents the registration of specially protected emblems referred to in Section 4, including trademarks that comprise "a representation of Her Majesty or any member of the Royal family" and "words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation". The Trade Marks Registry holds a list of names of those regarded by the Queen as members of the Royal family for the purposes of the Act. Presumably, this list has been or will soon be updated to include Kate Middleton. Names on the list cannot be registered as trademarks without the consent of the relevant Royal.

Applications, whether authorised or not, for celebrity names in general (including the names of minor Royals not on the list, or prospective Royals not yet on the list ) could also encounter an objection under Section 3 (1) (b) TMA if they cover goods that are likely to be perceived as souvenirs. In that case, an objection could be raised that the sign does not constitute a trademark as it serves as a ‘badge of allegiance' rather than an identification of trade source. In this regard, one notes with interest that pending U.K. trademark application no. 2567192 for "Princess Catherine Doll" for inter alia "dolls, toys and playthings" in the name of Arklu Ltd. has recently been withdrawn; it may well have encountered such an objection. One would expect that anyone seeking to register the name "Kate Middleton" as a  U.K. trademark  for any goods or services before her marriage to Prince William would encounter an objection under Section 3 (1) (b) if the goods are in the nature of souvenirs, and possibly also on grounds of bad faith under Section 3 (6) for any goods and services since the use without consent might misleadingly suggest a connection to Kate. As regards the situation after her marriage, it has been reported that her title will become Her Royal Highness Princess William of Wales, but that she is likely to be known as Princess Catherine of Wales. An application to register her royal name and/or title following her marriage should encounter an objection under Section 3 (5), and possibly also under Section 3 (6). It is therefore interesting to note pending U.K. trademark application no. 2565314 for PRINCESS CATHERINE in the name of London Pearl (London) Ltd., which was filed on 25 November 2010, just days after the royal engagement was announced, for inter alia "jewellery", "precious stones" and "watches". This application may slip through the Section 3 (5) net since Kate Middleton's Royal name and title may not yet be on the list of Royal family members held at the Trade Marks Registry. However, objections based on bad faith or non-distinctiveness, since the mark may be seen as a badge of allegiance rather than an indicator of origin, cannot be ruled out. This application may well meet the same fate as the Arklu mark noted above.

Others too are trying to secure protection for "royal" marks through a slightly less direct route. One interesting example is Halewood International Brands Ltd.'s Community Trade Mark application no. 9537051 for PRINCE WILLIAM for inter alia beers and non-alcoholic beverages in Class 32 and alcoholic beverages (except beers) in Class 33, claiming seniority from two French registrations. If this CTM is registered, Halewood will have acquired trademark rights extending to the U.K. in PRINCE WILLIAM despite its inclusion on the list of names of Royal family members held by the U.K. Registry, for which the latter will not grant registration. 

Preventing the use of the name Kate (Catherine) Middleton and, after marriage, her Royal title, however, is likely to be of even more concern to the Royal Family than preventing their registration as trademarks, because of the damage that their unrestricted commercialization could do to the reputation of the Royal Family. One way in which such use could be controlled would be for Kate Middleton herself, or someone authorised by her, to register her name as a trademark  and license its use to entities whose products befit her image. However, one suspects that the Royal Family takes a very cautious approach to  commercialization of the names of Royal Family members. One can imagine that the Royal Family would consent to use by Kate Middleton of her name/Royal titlein relation to an approved charity or award scheme, but that it would be less likely to approve of use that could be perceived by the public as Kate ‘cashing in' on her status. Another option for the Royal-to-be would be to register her name as trademark for purely defensive purposes, without using or licensing it for any goods or services, but if she filed in the U.K., the lack of an intention to use, if it came to light, could call into question the validity of any resulting registration, particularly a trademark registration for goods which would not normally be sold as souvenirs or goods one would not expect the Royal family to endorse, and moreover such a registration would become vulnerable to non-use cancellation after five years. No difficulties with intention to use would arise in respect of a CTM application, however, and if Kate Middleton or an entity authorised by her were to seek trademark protection, this is the route she would most likely take.

False Endorsement?

In the absence of owning a registration, neither Kate Middleton nor the Royal family could sue a business trading under her name for trademark infringement. They may be able to sue for passing off, however, if there is actionable goodwill in her name and the unauthorised use of it amounts to a misrepresentation of a connection with Kate Middleton that is likely to cause damage. However, goodwill is normally business goodwill, and Kate Middleton would probably have to prove that she had actually built up a business under the name in, for example, the sale of Royal paraphernalia.  Kate Middleton could, however, argue that the use of her name to boost sales of a product gives the false impression of her having endorsed the product. False endorsement was the subject of a case in which the Court of Appeal upheld a finding that the defendant, TalkSport Ltd., was liable for passing off for putting an image of Eddie Irvine, the famous motor racing driver, on a leaflet  promoting the defendant's radio station. Mr Irvine had acquired a significant reputation and the actions of the defendant gave rise to a false impression that Mr Irvine had endorsed the defendant's radio station [Irvine & Ors v TalkSport Ltd. [2003] EWCA Civ 423].

Eddie Irvine's substantial worldwide reputation as a Formula One motor racing driver was enhanced, however, by a number of lucrative endorsement contracts he had entered  into, including various endorsements of Gillette's razors for which he was paid large sums of money. These lucrative endorsement deals were taken into account by the judge in reaching his decision that Mr Irvine had acquired a property right in his goodwill. 

Product endorsement is very common among celebrities in the sports and music industries and many celebrities build a brand from the reputation in their names. The same cannot be said of Kate Middleton as a member of the Royal family, however, and it may therefore be more difficult to prove that property rights exist in her name, or indeed in the names of other members of the Royal family. 

Comment

If U.K. trademark application no. 2565314 PRINCESS CATHERINE and Community Trade Mark application no. 9537051 PRINCE WILLIAM proceed to registration, their proprietors will acquire the legal right to prevent the use and registration by third parties of these titles as trademarks for the protected goods. The threat of Court action by the Royal family's lawyers may be sufficient to stop the proprietors of these marks from exploiting them, but whether such threats would be supported by strong grounds remains to be seen.

Does Kate Middleton's status as the fiancé of the future King of England and soon to be member of the Royal family give her the right to prevent the commercialisation of her name and future title by businesses? As set out above, the availability of "Brand Kate" for use in the commercial world is not entirely clear. The fact that businesses have already filed applications for trademarks incorporating her name and anticipated title, though, show that many anticipate that using her name will bring them financial rewards. To a British trader, the most obvious route to registration of a trademark comprising a name of a member of the British Royal family may be  the U.K. system,  but the Community Trade Mark route offers significant advantages for no great increase in costs. In particular, refusal on absolute grounds may be less likely and there is no requirement of an intention to use, a point which might weigh greatly in the CTM's favour should Kate Middleton wish to protect her name or royal title herself or through a vehicle. Like her fiancé's late mother, Kate Middleton is likely to bring a youthful and human dimension to a royal brand that is arguably in need of some sparkle. Whether that translates into gold and silver for businessmen, or letters before action from Her Majesty's solicitors, remains to be seen.