The Duchess of Sussex, Meghan Markle, recently announced her new business venture: “As Ever, ” a brand about which few details are known but which has already sparked controversy in Spain. The reason: its logo bears a resemblance to the coat of arms of the City Council of Porreres, a small town in the Balearic Islands.
Far from announcing legal action, the municipality has opted for a diplomatic strategy: inviting Meghan Markle to visit Porreres. However, this case raises a legal issue regarding industrial property and trademark registration in the European Union (EU).
Can Meghan Markle register her “As Ever” trademark in the EU?
The European Union Intellectual Property Office (EUIPO) examines each application according to strict criteria to avoid conflicts with preexisting marks. In this case, the viability of the “As Ever” trademark could be compromised due to its similarity to the coat of arms of the Porreres City Council, which opens the door to potential objections based on current regulations.
The Paris Union Convention and Its Application in the “AS Ever” Case
Article 6 of the Paris Convention prohibits the registration of trademarks that incorporate emblems, coats of arms, and official symbols of member states and government organizations without their consent. In Spain, there are currently 14 symbols protected under this provision, but the coat of arms of Porreres is not included on this official list.
However, the EU Trademark Regulation introduces another relevant protection mechanism in this case. According to Article 7(1)(I), the registration of trademarks containing symbols of special public interest may also be refused. The Porreres City Council could use this criterion to present arguments against the trademark application, asserting that its coat of arms has historical and cultural value. It could also rely on any other claim demonstrating the existence of a special public interest and justifying its protection within the EU.
What can the Porreres City Council do about Meghan Markle's brand?
Porreres has not announced any legal measures. However, there are a few options for defending its emblem that it could consider if it decides to take action:
- Submit third-party comments to the EUIPO. This action would allow for the presentation of the reasons why the registration of “As Ever” could violate EU law.
- Apply for official protection of the coat of arms at the national and international levels, thereby preventing third parties from appropriating similar symbols.
- Negotiate directly with Meghan Markle and her legal team to reach an out-of-court settlement regarding the use of the logo.
What would happen if the EUIPO rejects Meghan Markle's trademark?
If the EUIPO were to decide to reject the registration of “As Ever” in Europe, Meghan Markle could continue to use her trademark outside the EU, provided there are no legal conflicts in those territories.
In this regard:
- In the United States, the regulations are different, and the Porreres coat of arms would not be protected unless it were registered in that country.
- In the United Kingdom, following Brexit, trademarks must be registered separately, so the EUIPO's ruling would not directly affect their registration there.
This case underscores the importance of conducting a preliminary feasibility analysis before registering a trademark, especially when there are graphic elements that could lead to conflicts with official symbols or matters of special public interest.
Paloma Querol, associate in the trademark practice group at Elzaburu