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This blog is inspired by the ‘Coat of Arms and Trade Marks – Dual Protection or Mutual Antagonism?’ Seminar attended on 19 March 2014. The Speakers at the Seminar were Clive Cheesman, Richmond Herald of The College of Arms, Mark Engelman, Head of Intellectual Property at Hardwicke, Simon Johnson, Barrister at Enterprise Chambers, and Dr Richard Anthony, Bursar and Fellow of St Edmund’s College, University of Cambridge.
By way of background, the perpetual right to bear arms in England, Wales, Northern Ireland and the majority of monarchies within the Commonwealth, is granted to appropriate bodies by the College of Arms (also known as Heralds’ College or Heralds’ Office). This is a royal corporation consisting of professional officers of arms, overseen by the Earl Marshal, a hereditary office held by the Duke of Norfolk. The College of Arms was first incorporated in 1484 by King Richard III and given regulatory authority since 1522. Scotland operates a different system to the rest of the UK and this is overseen by Lord Lyon.
In terms of the trade mark protection offered to a coat of arms, we need to look at Section 4(4) of the Trade Marks Act 1994 and rule 10 of the Trade Mark Rules 2008.
Section 4(4)
4. (4) Provision may be made by rules prohibiting in such cases as may be prescribed the registration of a trade mark which consists of or contains –
(a) arms to which a person is entitled by virtue of a grant of arms by the Crown, or
(b) insignia so nearly resembling such arms as to be likely to be mistaken for themunless it appears to the registrar that consent has been given by or on behalf of that person.
Provision may be made by rules identifying the flags to which paragraph (b) applies.
Where such a mark is registered, nothing in this Act shall be construed as authorising its use in any way contrary to the laws of arms.
Rule 10 – Prohibition on registration of mark consisting of arms; section 4
10. Where having regard to matters coming to the notice of the registrar it appears to the registrar that a representation of any arms or insignia as is referred to in section 4(4) appears in a mark, the registrar shall refuse to accept an application for the registration of the mark unless satisfied that the consent of the person entitled to the arms has been obtained.
Accordingly, those that have been granted the right to bear arms and wish to use them in the course of trade are free to register the whole or any part of the full achievement as a trade mark. Further, it is possible to prevent third parties from registering your coat of arms, or “insignia so nearly resembling such arms as to be likely to be mistaken for them”. This applies to any coat of arms awarded throughout the UK.
However, it is worth noting that whilst both the College of Arms and Lord Lyon work closely with the UK IPO, the UK IPO will no longer refuse a trade mark application containing or consisting of arms or insignia nearly so resembling arms at the outset. Instead, it will advise that applicants contact Lord Lyon in Scotland or Garter King in the England given that their application may be affected by the law of Arms in either or both. The Registrar will not wait for the result of any correspondence between the applicant and Garter or Lord Lyon, but will progress the application in the normal way and publish the mark for opposition should all other criteria be met.
This change came into effect on 17 August 2009 as it was felt that as other earlier applications/registrations no longer formed a basis for refusal at the examination stage, and arms are effectively an earlier right, they should not form a basis for refusal here either. Instead, it is now up to the holders of arms to protect their rights using the power granted by Section 4(4) of the Trade Marks Act 1994.
Therefore, right holders will need to monitor the UK Register in order to ensure that their coat of arms, or versions of it, is not applied for. The UK IPO will notify proprietors of any confusingly similar applications (although it will not refuse protection at the outset because of these), so one would hope that conflicting applications will be picked up via this system. However, if a holder of arms does not have a registered trade mark, there will be no means to notify them other than a watching service or, possibly, via the College of Arms and/or Lord Lyon.
Charlotte Blakey 7 April 2014
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Another interesting question: if the arms that are trademarked not proper arms granted by the College or Lord Lyon etc, could someone else who doesn’t own the trademarked arms petition for them to be granted to themselves (without the knowledge or leave of the person possessing the said trademark)? Now that the IPO and heralds no longer communicate with each other to avoid clashes and infringement before grant/registration, this could happen and if it does, does the grant of arms trumps the IPO registration or vice versa?
Thank you for your query. As it is the trade mark applicant’s responsibility to check with The Garter King of Arms in England / Lord Lyon in Scotland that a coat of arms is not registered in the appropriate Register, if a trade mark registers and is later objected to on the basis of a registered coat of arms, the coat of arms would likely succeed in such an objection. However, it is unclear as to whether this responsibility is on-going and whether a later filed coat of arms could invalidate an earlier registered trade mark (for which such searches with Garter King and Lord Lyon would have been clear). It seems unfair in our view for this to be the case, but there does not appear to be clear guidelines on this matter in order to confirm the position.