A battle Royal over Registration

Tuesday 28 January, 2020

The Guardian has reported that Harry and Meghan are facing a potential legal battle over their brand ‘Sussex Royal’ after someone else lodged an application with the EU Intellectual Property Office to trade mark a range of goods, including alcohol, beer and luggage under ‘Sussex Royal’.

If you haven’t protected your brand, it can come as a huge shock to have someone else register a trade mark that you have been using, and then object to you using it. Once someone else has registered your trade mark, they can get an injunction to prevent you using the trade mark or seek damages for infringing their trade mark.

If it happens to you, there are several ways to try and fix things, but they all cost money and take time.

• If you have been continuously using your trade mark since before the other party registered it, you may be able to defend against an action for trade mark infringement by arguing continuous use.
• If you have a reputation and brand associated with your mark, because you have been using it for a while, you can try and remove the competing registration on the basis that it is misleading and confusing or a breach of the Fair Trading Act.
• If a competitor is trying to pass off its goods as yours by registering a mark that you have been using, you could consider bringing an action for passing off to enforce your unregistered trade mark rights.  
• Alternatively, you could try to register your own trade mark by proving that you have been using the same trade mark at the same time or prior to the competing registration.

However, as Harry and Meghan may be about to discover, all of these are more complicated and expensive than simply registering your trade marks as soon as you start using them. You can even register a trade mark before you start using it, and then have three years to start using it before it becomes vulnerable to challenge.  

Remember that New Zealand trade mark registration only protects your mark in New Zealand. If you plan to operate overseas, you can either file a separate application in each country where you operate, or plan to operate, or you can file an international application through the ‘Madrid system’, designating all the countries in which you want to register. This can cost more initially, but, as ‘Sussex Royal’ may be about to discover, it can make your trade mark registrations more efficient.

If you have any questions or need help with IP issues, contact Shelley Slade-Gully, our Legal 500-recommended IP expert.