If you are considering filing a trade mark one of the most pertinent questions you should always ask yourself and an indeed an IP lawyer is, “is my trade mark registrable”. Most of our readers will be well aware that, not every trade mark is capable of registration and the Trade Mark Act 1994 (the Act) granted the UK trade mark registry the power to refuse registration of trade marks in several circumstances.
As an IP lawyer, we are frequently reminded that the question of registrability is not always at the forefront of our client’s minds, and unfortunately for Grant Harrold (Mr Harrold) the former butler of Prince Charles he had already incorporated a company, secured domain names amongst other things to later find out his brand name was incapable of registration.
So, let us take a look at the facts of this particular case. On 27 June 2018, Mr Harrold filed an application to register the logo below in relation to training education and consultancy services related to entertainment and etiquette.
Shortly after the application was published the examining officer raised objections to the application on the basis of section 3(5) and 4(1)(d) of the Act, which provides that:
3(5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).
4(1) A trade mark which consists of or contains –
(d) words, letters or devices likely to 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 Her Majesty or, as the case may be, the relevant member of the Royal family.”
Mr Harrold was able to successfully argue that the words THE ROYAL BUTLER would be taken by the public to indicate a fictional, not real, character. This coupled with the fact the above logo was so dissimilar to the Royal Arms, Mr Harrold convinced the examiner that there was no likelihood of confusion amongst the public and therefore overcame the examiner’s objections.
Unfortunately, this was not the end of the matter and on 15 October 2018 Lord Chamberlain lodged a formal opposition on behalf of the Crown. Lord Chamberlain based the opposition on sections 3(5) and 4(1)(d) of the Act as detailed above. He also put forward additional sub-arguments indicating that the trade mark should be refused on the basis that it would be contrary to UK law, namely:
- the prohibition on giving a false indication of approval by Her Majesty or any member of the Royal Family under section 12 of the Trade Descriptions Act 1968;
- unauthorised use of any device, emblem or title in such a manner as to be calculated to lead to the belief that the user is employed by, or supplies goods or services to Her Majesty or a member of the Royal Family according to section 99(2) of the Act, namely; and
- the prohibition on use of certain sensitive words or expressions, as provided in section 1194 of the Companies Act 2006.
Mr Harrold rather unsuccessfully argued that (1) the words ‘royal’ and ‘butler’ are dictionary words and as such are not owned by anyone (2) the logo he was attempting to register was not a Royal emblem or insignia, (3) he had obtained permission to use ‘The Royal Butler’ by senior members of the Royal Household and (4) he had successfully used the name ‘The Royal Butler’ for around seven years as his ‘stage name’ without any challenge.
Unsurprisingly the application was refused in full and it was decided that concerning educational services and entertainment services “the contested mark is likely to indicate that the user has, or has recently had, Royal patronage or authorisation”. Additionally, it was decided that even though the logo applied for, was not identical to the Royal arms and whilst some of the public are aware of what the Royal arms look like, some do not, and most will know the Royal arms includes a lion ‘rampant’. As such, the dissimilarities between the gold lion with a crown in the application will do very little in counteracting the impression of royal patronage. As a result, it was decided a registration of the trade mark in relation to the services specified in the application would be contrary to sections 3(5) and 4(1)(d) of the Act.
We are not at all surprised by the outcome of this opposition, as sections 3(5) and 4(1)(d) of the Act are designed to prevent these very situations whereby there is a possibility of blurring and affiliation with the Royal Household. Cases like this also raise another question which IP lawyers are often asked: “can I file my trade mark application myself?”. Whilst individuals can file trade mark applications by themselves, we would always advise against it (biased, I know, but hear me out). Often, we come across clients that have filed trade mark applications themselves, who have unfortunately run into objections from the registry or indeed an opposition from earlier rights holders. The risk these clients then face is ultimately ending up with no registered trade mark, or a trade mark that they cannot use in the way they intended or a trade mark that is unenforceable and application costs that are lost and non-refundable. Which is why instructing an IP lawyer early on in the process is imperative as we are usually able to spot any potential red flags that may affect your application.
Lastly, whilst it is imperative to ensure you secure your trade mark, not every mark will be capable of registration. There are a number of absolute grounds which the examiners can rely on to refuse an application, which is why if you are thinking about trademarking your brand you should speak to one of our IP specialists before you do. Here at Briffa, we can advise you on whether your trade mark is registrable and assist you with the application process.
Written by Clara Bakosi, Solicitor