With Prince Harry set to wed Meghan Markle on 19 May 2018, it will be no surprise that brand owners and retailers will seek to capitalise on the hype and goodwill around the latest royal wedding. In the run up to the marriage of Prince William and Kate Middleton in 2011, £222 million was spent on memorabilia. Novagraaf’s Claire Jones looks at the IP issues that companies need to consider.
As with other major events, such as the FIFA World Cup or the Olympic Games, there are a number of IP rules and regulations to consider if a business is seeking to capitalise on the upcoming royal nuptials.
Trademark do’s and don’ts
Sections of the UK’s Trade Marks Act 1994 prohibits registration of a number of marks denoting a link with the royal family, including:
- The Royal Arms
- Images of the crown, royal flags or other emblems
- Images of any member of the royal family, including Her Majesty the Queen
- Any mark which is likely to suggest that the applicant has royal patronage or authorisation.
A search on the UK registry revealed an application for the name “Meghan Markle” in Class 25, filed in January 2018 by a US company, Risen Phoenix LLC, although this mark is listed as ‘withdrawn’.
Advertising Standards Authority’s Committee of Advertising Practice (CAP)
CAP has released advice on how it intends to control advertising surrounding the Royal wedding, and the birth of Prince William and the Duchess of Cambridge’s third child.
In general, references to the event(s) or simple congratulatory messages will be permitted, but marketers must not claim or imply any endorsement or affiliation with the Royal Family.
There should be no mention of members of the Royal Family without their consent nor use of the Royal Arms or emblems.
Marketing communications must not use the Royal Arms or emblems without permission, and references to a Royal Warrant can only be used by those to whom it has been awarded and must be checked with the Royal Warrant Holders’ Association.
Relaxing the rules for memorabilia
The Lord Chamberlain’s Office has issued a set of guidelines which relax the normal restrictions to Royal photographs and insignia to allow for their use on memorabilia and souvenirs. This covers approved photographs of the couple and the full Coat of Arms of HRH Prince Henry of Wales.
There are also a number of approved phases that can be used (e.g. ‘To Commemorate the Marriage of HRH Prince Henry of Wales and Ms Meghan Markle, 19 May 2018’). To be eligible, the products must be (a) in good taste, (b) free from any form of advertisement and (c) carry no implication of Royal custom or approval.
The relaxation still comes with some restrictions. For example, the approved photographs and Coat of Arms cannot be used on clothing, tea towels or aprons. The approved photographs can be used on containers (such as mugs and bowls), but use of the Coat of Arms on such products is not allowed. The Coat of Arms cannot be flown as flags, although ‘schemes of decoration for celebrating the marriage’ are allowed.
In the UK, there are no explicit rules on personality rights or rights to publicity, with individuals having to rely on a mix of trademark infringement, passing off and other avenues such as advertising standards and confidential information to enforce their image rights.
In Rihanna v TopShop, Mr Justice Birss held: “there is no such thing as a free-standing general right by a famous person (or anyone else) to control the production of their image”, a stance that the Court of Appeal agreed with, repeating the general principle that there is no image right in English law, but confirming that there are two main factors to be considered in a successful claim for passing off:
- The misrepresentation to the source of the goods; and
- The misrepresentation being material as to have an effect upon the customer’s buying decisions.
While the case does recognise some rights for people to protect their images, each case will still be assessed on its own merits and both courts reiterated that there are no image rights per se. The Rihanna case is one of a number of important UK cases on celebrity image rights (including, notably Douglas v Hello! Ltd and Edmund Irvine and Tidswell v Talksport Ltd).
HMRC does however have guidance on the assignment of image rights and goodwill to an image rights company (see here). Such a practice is common in the sports industry, with notable examples including tax structures put in place by football clubs in respect of players’ image rights. If there is a transfer to a corporate structure, it is a taxable and chargeable gain and the image rights will be valued for the purposes of capital gains.
Associating with the wedding
In general, references to the event will be allowed if there is no indication of an association where there is none. There are additional statutory provisions specific to the Royal Family that apply here:
- Trade Descriptions Act 1968 – section 12 – a person must not give a false indication that their products or services are supplied to or approved by Her Majesty the Queen or any other Royal Family member.
- The Consumer Protection from Unfair Trading Regulations 2008 – subsection to Section 12 – clarifying that trade or business activity must be ‘unfair’ to be found unlawful (i.e. falling below the standards of good faith or affecting a consumer’s purchasing behaviour).
There is an official wedding photographer (Alexi Lubomirski) and copyright is held by Kensington Palace. Official guidance stipulates that there is to be no commercial use of the official engagement photographs (and presumably the official wedding photographs).
What about domain names?
EBay already has a number of wedding-related domain names for sale including;
- Harryandmeghansouvenirs.uk – Buy It Now for £10,000
- Harryandmeghan (.com and .co.uk) – were offered for £25,000. The holding page of each of these websites is offering the two domains for sale “perfect for a royal website or as a landing page”.
This isn’t the first time that the Royals have led to a spike in themed domain name registrations. The birth of Prince George also saw URLs on the market for £10,000.
Claire Jones is a Trademark Attorney at Novagraaf in London