The applications cover a wide range of goods and services, including printed matter such as educational materials and activity books, clothing, campaigning, charitable fund raising, education, training and sporting activities, and social care services including emotional support groups.

Since officially stepping down from their Royal duties last month, the couple has been working on branding themselves outside of their royal appearances. In addition to the international trademark applications, the couple has also recently launched an and . However, alongside the opportunities that may be available for the Royal couple, Harry and Meghan may face difficulties in successfully registering these marks and protecting their brand. 

An was filed with the European Union Intellectual Property Office to trademark a number of goods, including toiletries, jewellery, luggage, sporting articles, beer, and alcoholic beverages, using the mark SUSSEX ROYAL. The applicant, Ui Phoenix Kerbl, appears to be an Italian designer based out of Bolzano, Italy. Since the Royal couple’s international filings, have been filed and made available on WIPO, seemingly unrelated to the Royal couple and their brand.

In addition to the growing number of individuals applying for registration of the SUSSEX ROYAL mark and the potential for oppositions to the couple’s applications, Harry and Meghan seem to have filed their WIPO applications past the . Given that both international applications claim priority to the UK applications from June 21, 2019, Harry and Meghan had six months, until December 21 2019, to file their applications with WIPO. If questions do arise with respect to the date of the international filing, further difficulties may present themselves given the number of individuals who have filed a national trademark application with their respective jurisdiction.

In seeking to protect their brand, the Royal couple is working towards remaining members of the Royal family while having financial independence. If the applied-for marks are successful, it is estimated that Harry and Meghan could make as much as in their first year by tapping into the profitable North American market. Further, it is suggested that the use of the SUSSEX ROYAL mark on various products could “

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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In the case, Mrs. Trine Sig ceased her employment as a sales and marketing assistant at Verstergaard. Along with two other former employees of the company, she formed companies to manufacture and commercialize insecticidal bednets (a product made by her former employer). Within the suit filed by Verstergaard for misuse of trade secrets, the evidence demonstrated that Mrs. Sig, while contractually obligated to maintain the confidentiality of the information and knowledge acquired while working for the company, (i) did not have any access to technical information related to the production process of Verstergaard´s insecticidal bednets during her period of employment, and (ii) did not appreciate that the new companies misused Verstergaard´s trade secrets when developing their own products.

Given these facts, the first-instance judge .  The judge reasoned that “a person can be liable... even if he is not conscious of the fact that what he is doing amounts to misuse of confidential information”. From this judgment, the subjective mind of the offender (actual knowledge of the trade secret and awareness of the infraction) plays little, if any, role in determining personal liability. Instead, objective knowledge of the infraction (the possibility of having access to the trade secret) in conjunction with strict liability terms implied in the contract were enough to find Mrs. Sig liable.

This decision was , which did not recognize an implied term imposing strict liability and held that there was “no business reason to imply a term of that harsh extent”. This appeal decision was upheld by the UKSC, which stressed the relevance of the previous knowledge of the trade secret by the offender and of his consciousness in the misuse of the trade secret:

“Given that she did not learn of any relevant trade secrets owned by Vestergaard when she was employed by them, and did not appreciate that any such secrets were being used by an employee of the company of which she was a founder and director, it would be oppressive to hold Mrs Sig (as opposed to the employee or the company) liable to Vestergaard for breach of confidential information, whether or not she had previously worked for Vestergaard pursuant to a contract containing a standard sort of provision aimed at protecting Vestergaard's trade secrets”.

This decision by the UKSC raises questions about objective and subjective knowledge in cases of liability for misuse of trade secrets - the answers to which do not enjoy sufficient legal certainty in several countries. In fact, the regulations on trade secrets at the international level do not specifically cover the extent to which parties should know of a misuse. Article 39.2 , for example, in which the protection of trade secrets is codified, does not provide details on the level of duty of care the offender would owe to escape liability. At the national level, the in the USA and Canada does not specifically rule which are the cases where a person "has reason to know" that a trade secret has been misused. In view of this uncertainty, the legislature and the adjudicators are charged to form plausible solutions from general principles of justice, which may lead to discrepancies from the applicable provisions.

In my opinion, the decision of the UKSC is equitable and appropriate.

From a legal perspective, the decision does not allow the involuntary extension of objective knowledge of breach of contract to situations in which the potential offender did not have access to confidential information and is completely unaware of trade secrets being misused. If a party does not have any knowledge of the trade secret and of their misuse, then there is no duty of care with respect to confidentiality and, therefore, that party cannot be held liable. In this case, the implicit and explicit obligations under the contract are recognizable by all parties, fully observing basic contractual principles.

At an economic level, the different interests involved in the protection of trade secrets have to be balanced in order to achieve a fair solution. On the one hand, we can not ignore the importance of the protection of trade secrets for the purpose of encouraging innovation and maintaining competitiveness in small and mid-sized companies in the market, for which intellectual property rights (like a patent) might be too costly to manage. In this sense, the European Commission stressed in its that “the protection of confidential business information as a trade secret is, for many businesses, often the only or the most effective way to protect their intellectual property” (see also ). Appropriate legal protection of trade secrets is therefore economically efficient and desirable.

On the other hand, the protection of trade secrets naturally restricts horizontal competition, since competitors may not use trade secrets obtained improperly to develop competing products and projects. An excessive protection of trade secrets may stifle competition unreasonably, which is contrary to the purposes of competition law, and induces economic inefficiency. This, in addition to imposing strict liability for misuse of trade secrets may have negative impacts on the economy. In view of this, the UKSC held in this decision that “the law should not discourage former employees from benefiting society and advancing themselves by imposing unfair potential difficulties on their honest attempts to compete with their former employers”.

Therefore, the subjective knowledge of the potential offender have to be considered, in order to observe the contractual principles of law and to achieve an fair economic balance of different interests when dealing with the protection of trade secrets.

Pedro Henrique Dias Batista is an IPilogue Editor and a PhD student at Ludwig Maximilian University of Munich.

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On December 1, 2011, the involving English soccer superstar Wayne Rooney and his former agency, Proactive Sports Management Limited, over commission payments.  Among five issues the Court decided, the most important involved whether the agency was entitled to commissions from contracts it had negotiated previously, and whether the contract it entered into with Mr. Rooney was a restraint of trade.

As here on IP Osgoode, the plaintiff, Proactive, sued Mr. Rooney for the payment of commissions from an image rights representation agreement (IRRA) between Proactive and Mr. Rooney.  Mr. Rooney ended his relationship with the agency, but Proactive argued that they should still get their 20% commission from those continuing endorsements and advertising deals negotiated when Mr. Rooney was a client of their agency.  Since Mr. Rooney was only 17 at the time of the agreement, and both he and his parents did not appreciate the legal implications of the contract, including its relatively long term (eight years) and high, unchanging, commission rate, the agreement was .  Proactive was .

When considering the issue of whether Proactive was entitled to commissions, after termination, on those endorsements and contracts it had negotiated, the test according to Lady Justice Arden was a simple one: the right to commission was created whenever Proactive procured an endorsement contract.  Mr. Rooney’s counsel had argued that the idea of continuing commissions, even after termination of their agreement, would be unfair as Proactive would essentially be getting paid for not doing any work for Mr. Rooney at the time. Lady Justice Arden put this argument to rest when she stated that “it is the procuring of endorsement contracts that gives rise to the right to commission and not the ongoing provision of services.”  Proactive ought to be entitled to reap the benefits of the work that it did for Mr. Rooney, based on the agreement they had in place, regardless of how long those benefits may extend.

In fact, this should be a key incentive in an agent-client relationship: the client wants a long, lucrative contract, and the agent is motivated to negotiate one in order to be rewarded with the commissions. In addition to this, Lady Justice Arden also noted that practically speaking, Proactive likely had significant expenses to provide Mr. Rooney with the services he expected, and as such, would be counting on commissions from the contracts they negotiated to continue in order to be compensated.  Proactive’s appeal on this issue was therefore allowed.

However, Proactive did not have the same success on the remaining issues.  In appealing that the contract between Proactive and Mr. Rooney was not an unreasonable restraint of trade, the agency set out three arguments:

1. Mr. Rooney’s trade is playing soccer, not endorsements, and as such the IRRA could not restrain his trade;
2. The IRRA did not restrict Mr. Rooney’s earning potential, and in fact increased it.
3. Nothing about the IRRA made it unfair or oppressive, as had been required in previous case law on the issue such as in .

On the first argument, Lady Justice Arden noted that while Mr. Rooney’s primary occupation is soccer, “a person’s ancillary activity of exploiting his image rights is just as capable of protection under the doctrine of restraint of trade as any other occupation.”  Lady Justice Arden appealed to public policy, as she said that to the public, it would not matter whether someone’s potential is being restrained in their primary or ancillary activities – having potential restrained ought to be enough to be problematic.

Furthermore, Lady Justice Arden noted that except in very rare circumstances, the exploitation of image rights is by its very nature going to be ancillary to someone’s primary occupation.  This only further strengthened the reasoning that just because an activity is ancillary it does not naturally follow that the doctrine of restraint of trade is unavailable.

On the second argument, Lady Justice Arden referred to Schroeder in stating that “it is possible for a single activity…to be both creative and yet ‘sterilised’.”  In Schroeder, the argument had been made by the defendant that the agreement could not have been an unfair restraint of the plaintiff’s trade because it was a means for sharing his creative talent with the world.  Essentially, just because a contract brings someone benefit does not necessarily mean that it is not still unfair, as it may not fully suit the best interests of one party to the agreement.

On the third argument, Lady Justice Arden considered what was required to trigger the restraint of trade doctrine.  For Lady Justice Arden, the very unusual length of the contract (which she noted, at eight years, was about the average length of a soccer player’s career), the fact that the Mr. Rooney and his parents had no legal advice at the time of signing, and lack of bargaining power afforded Mr. Rooney despite being a “hot property” all pointed toward the agreement being oppressive.  From the disposal of all of these arguments, Proactive was denied its appeal on this issue.

After considering the rest of the issues on appeal, Lady Justice Arden and the rest of the Court decided that while Proactive was entitled to commissions for those contracts negotiated prior to termination, the agreement was an unfair restraint of trade and therefore nullified the claim for commissions.

The important lesson to take away from this case is not new: contracts must be carefully drafted and appreciated by all of the parties involved.  This means setting out, in as certain terms as possible, what each side intends by its agreement, and assuring that the other side understands what benefits or restrictions each term implies (which usually requires independent legal advice).  Perhaps a newer lesson that this case teaches us is that since a person’s reputation, likeness, and overall “brand value” could endure indefinitely, considerations must be made in the contract to appreciate that fact.  This would include paying particular attention to how long aspects of the agreement can extend into the future, what happens in the event that a party breaches or ends the contract, and what will occur when the contract naturally ends but the work and benefits of the relationship continue to live on.

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