The hugely successful Scottish-based brewery, BrewDog, has built a reputation on innovative and attention-grabbing product launches and brand names.
It decided to take on the Elvis Presley Estate (Estate) in a controversial trade mark dispute relating to its Elvis Juice IPA.
The company has been defeated at the first stage decision at the UK Intellectual Property Office, but it remains to be seen whether Elvis will leave the building (or the shelves) or fight on for a come-back tour.
At the end of last month the UK Intellectual Property Office ruled in favour of the Estate and refused BrewDog's registration for UK trade marks for "Elvis Juice" and "BrewDog Elvis Juice" for beer and brewery products.
The brewers launched their grapefruit and blood orange Elvis Juice IPA in 2015 and it quickly became one of the company's bestselling products with turnover of just under £2 million in 2016.
In 2016 trade mark applications for Elvis Juice and BrewDog Elvis Juice were opposed by the Estate, based on the Estate's earlier European Union trade mark registrations for the words Elvis and Elvis Presley, which protects identical beer and brewery products.
Readers of our blog, when the dispute was still at an earlier stage of brewing, may recall that in response to the Estate's opposition the two founders of BrewDog announced that they had changed their Christian names by deed poll to Elvis!
Given that the change of names apparently happened after commencement of the trade mark opposition action and the company traded as BrewDog rather than Elvis, any potential defence to trade mark infringement claims based on honest use of their own names was never going to be a strong measure (or pint!).
Perhaps it was more of a clever spin to highlight that BrewDog considered the Estate may be taking the enforcement of intellectual property rights too far when BrewDog was a prominent part of the brand name, was well-established and customers could not be confused or assume any association with "the King".
On the other hand, trade marks are valuable guarantees and badges of origin and it is important for brand owners to take enforcement action to avoid copy cats taking a free ride or the brand becoming generic.
The Estate will have wanted to protect the valuable Elvis brand and set a marker down that third parties are not free to use the Elvis name on any products.
Subject to any appeal by BrewDog, the UK IPO has refused to register BrewDog's applications, meaning that either they will have to change the product name to avoid additional claims of infringement and damages or (which seems unlikely at this point) agree a commercial deal with the Estate obtaining official permission to use the Elvis name.
The key legal issue which the IPO had to decide was whether BrewDog's use of Elvis Juice and BrewDog Elvis Juice created a likelihood of association in the minds of consumers, to the extent that there was at least a risk that the use of the Elvis name would make the public wrongly believe that the BrewDog product came from the Estate or was linked to it, thus creating a likelihood of confusion.
Having agreed that the Estate's earlier Elvis and Elvis Presley trade mark registrations covered identical beer and brewery products, it was decided that the average consumer would consider or recall the Elvis name as the most prominent or at least equally prominent part of the Elvis Juice or BrewDog Elvis Juice names and would assume that no other trader would use such a mark other than those responsible for the Elvis mark.
It was decided that the average consumer would assume that the brand Elvis Juice was from the same or economically-linked source as the Elvis brand (i.e. the Estate) and so the BrewDog applications were rejected.
It is clear from the reasoning of the decision that BrewDog's defeat was in large part due to the huge reputation and iconic status of Elvis, and the fact this wasn't standard memorabilia products but an alcoholic beverage.
Whether BrewDog now appeals the decision or uses it instead to generate support among its customer base and 50,000 shareholders to turn the defeat into a positive, remains to be seen.
Given the iconic status of Elvis so many decades after this death, it is hard to see how BrewDog could succeed on appeal.
However, it is interesting that in the course of the opposition, the Estate dropped their claims based on them having a famous mark which was being taken unfair advantage of.
Also, the earlier trade mark registrations for Elvis and Elvis Presley were only registered in 2014 and 2015.
It does not appear, or at least, there was certainly no evidence filed to demonstrate that there has been any use of these marks.
In the UK and the European Union, a trade mark is vulnerable to cancellation if it is not used within five years of registration.
As neither mark had been registered for less than five years, such a challenge wasn't possible or relevant at this point in time.
It is not clear that the decision would have been the same if based on other Elvis registered trademarks for goods other than beer or beer products; many consumers buy memorabilia type products as fans rather than believing such products emanate from one official source.
It will also be interesting to see whether the Estate launches beer products in the UK and/or European Union any time soon to avoid any non-use challenge.
Perhaps given the product success and the need for use, some form of mediation could lead to a "Love Me Tender" resolution...or instead it may be time for Elvis to leave the BrewDog building?
It will be interesting to see how this one plays out in the media and whether it is seen as a victory for strong global intellectual property rights or provides too much of a dogged protection for big brand owners.
Contributor
Partner
