Prince Harry and Meghan Markle, Archewell and the trademark issue with a Filipino businessman
09 March 2021
Prince Harry and Meghan Markle through their legal representative, Cobblestone Lane LLC, intend to oppose a Philippine trademark application filed by a Filipino applicant named Victor Martin J. Soriano for the mark "ARCHEWELL HARVATERA" for cosmetics and fragrances which was filed on July 8, 2020. Based on the online database of the Philippine Intellectual Property Office (IPO), Soriano also has a separate application for "ARCHEWELL COSMETICS" for cosmetics filed on December 24, 2020.
Based on news reports, the royal couple named their non-profit initiative "Archewell" in honor of their eldest son, Archie Harrison Mountbatten-Windsor, born on May 8, 2019. As reported in several news outlets, they announced the name of their foundation sometime in April 2020 - which is an umbrella organization that plans to include emotional support groups, a multi-media educational network, a wellbeing website and their own charity and volunteer outreach program. They reportedly intend to file or have filed trademark applications in many countries.
However, in the Philippines, there are prior applications for Archewell belonging to other persons, two of which were filed by Soriano, which may bar the registration of their own application in the Philippines. Under Philippine law, an application for trademark registration may be denied if there was an earlier application for the same or confusingly similar mark.
Cobblestone Lane LLC may have filed a motion for extension of time to oppose Soriano's published application for "ARCHEWELL HARVATERA" since it may be a bar to its own Philippine application for “ARCHEWELL”.
According to Susan Villanueva, Senior Partner and Head of the Intellectual Property Department, Cruz Marcelo & Tenefrancia, the online database of the Philippine IPO also shows that another person, Gina Agnes D. Sarabia, has registered ARCHEWELL for jewellery on December 6, 2020; and Antonio Firmeza also filed an application for ARCHEWELL for cosmetics on December 14, 2020, which appears to still be pending as well. She says that it should also be noted that both Soriano and Firmeza have the same Legaspi Village, Makati City address.
“All of these registrations and applications filed by Sarabia, Firmeza and Soriano used the same representation and font - it appears to be a Tavern S Bold font - for ARCHEWELL,” she says.
Although the case is still in its initial stages, Villanueva says that the outcome of this dispute may involve the Filipino businessman asserting that his earlier filing date for "ARCHEWELL HARVATERA" gives him the better right to the mark since the Philippines has shifted to a first to file trademark regime where an applicant with an earlier filing date can prevent the registration of a subsequent application for the same or confusingly similar mark.
“In order to prevail against Soriano, Cobblestine Lane LLC has to prove that it is entitled to the name and mark "ARCHEWELL" and that Soriano's application was done in bad faith and dilutes the strength of its mark,” she says.
“Cobblestone Lane LLC could also assert that Archewell Foundation's mark is well-known if it can meet the criteria for a well- known mark in the Philippines which includes the number of registrations obtained in other countries. Cobblestone would also have to oppose Soriano's later application for "ARCHEWELL COSMETICS" as well as Firmeza's application for "ARCHEWELL" on the same grounds. It may also file a cancellation petition against Sarabia's registration for "ARCHEWELL"
on the same grounds as well.”
To avoid such a dispute, Villanueva says it is still best practice to always conduct a trademark search before choosing a name or a mark.
“A preliminary search can now be done online to determine whether there will be conflicting applications or registrations in the countries where you intend to use and register your mark,” she says. “It is also best practice to obtain a trademark clearance opinion from external counsel in the countries which will be the major markets for your goods or services bearing your name or trademark.”
She adds, “It is also best practice to file as soon as able a Madrid application if you intend to register and protect your marks in several countries which are members of the Madrid Union. There are currently 124 countries that are members of the Madrid Union. In fact, the Madrid application should be filed before making any public announcement as to the name or mark to be used. Filing a Madrid application will enable the applicant to enjoy the benefit of an earlier priority date reckoned from the local or basic application. Even if their application is examined later in the Philippines and a mark with an earlier filing date is cited against it, the applicant may invoke the date of the basic application, provided it is earlier than the filing date of the Philippine application being cited.”
Excel V. Dyquiangco
