As Prince Harry and Megan Markel can attest, the process for obtaining a ‘royal’ trade mark is not always straightforward. The word ‘royal’ is carefully protected with statutory provisions in place to prevent brands from implying association with the royal family unless consent has been obtained.
Does this mean that the word “royal” is completely off limits unless you have a real royal connection? Not necessarily, as London-based esports team, London Royal Ravens, recently discovered.
In 2019, London Royal Ravens filed trade mark applications to protect their name in the UK and EU for a range of products and services relating to professional esports and video game contests.
The UK Intellectual Property Office (“UKIPO”) raised objections under s3(5) and s4(1)(d) of the Trade Marks Act 1994; quirky provisions which concern specially protected marks such as emblems. The examiner took the view that, because the mark contained the word ‘royal’, consumers were likely to think that the London Royal Ravens enjoy royal patronage or authorisation. Therefore, the mark could not be registered without consent given by or on behalf of Her Majesty The Queen.
For its application to proceed, the London Royal Ravens either had to persuade the UKIPO to drop the objection or obtain consent by or on behalf of The Queen.
Obtaining royal consent is not straightforward. The Lord Chamberlain of the Household at Buckingham Palace, who is the senior officer of the Royal Household, will only grant permission upon seeing evidence of consent to use from the Royal Names Team, which is a UK government department.
In order to overcome the objection by this method, London Royal Ravens would have needed to demonstrate strong evidence of their connection to the ‘royal’ title. Strict standards are applied and a large amount of material is required for something only sparingly granted. Guidance details the type of information required, such as: why the name is being sought; a history of the applicant, its accounts, associations and future plans; and details of the administration and members of the company.
Does royal mean Royal?
While exploring the option of royal consent, London Royal Ravens challenged the very basis for the objection giving reasons for why its trade mark would not lead consumers to believe that the team has royal patronage. The arguments focused on two areas: the mark and the context.
First, the team pointed to the structure of its mark. Unlike, for instance, Royal Mail or Royal Navy, ‘Royal’ appears in the middle of the mark and is a laudatory term alongside ‘Ravens’. Taking issue with the examiner’s view that ravens are associated with the Tower of London and therefore, the Crown Jewels and therefore, the Royal Family, the team argued that these sequential steps were tenuous and required prior knowledge.
Second, the team explained how its brand is used and reasoned that players of esports would not believe that the team is endorsed by the Royal Family simply because the word ‘royal’ appears in the mark. Royal Warrants are typically granted to companies that provide specialist goods to the Royal Household. Royal patronage is usually reserved for charities. It is not typical for esports and video games to receive Royal patronage or be associated with the Royal Family. In relation to sports of any kind and especially teams, the Royal Family are likely to remain neutral (at least officially).
Eventually, the UKIPO agreed that it would be highly unusual for the name of a sports team to be granted royal authorisation and consumers are unlikely to think, just because of the word ‘royal’, that the London Royal Ravens enjoy the patronage of the Royal Family. The objection was withdrawn.
What about the EU application?
There are similar grounds for objection in the EU trade mark regulations, which state that marks shall not be registered if they include emblems covered under the Paris Convention. However, the wording is not as narrow as section 4 of the UK Trade Marks Act. That played in the team’s favour on this occasion and the EU application passed examination without objection.
Following Brexit, it will be interesting to see if any UK marks that have been cloned from EU registered marks will be challenged on these sorts of grounds in the future. Brands with royal aspirations (but not connections) would be wise to assess registrability from the outset and seek guidance on how to navigate the subtly different approaches to ‘royal’ trade marks across Europe.