4 July 2018

BrewDog wins trade mark dispute against Elvis Presley’s estate

Scottish craft beer company BrewDog has won a trade mark battle with the late Elvis Presley’s estate as a result of which BrewDog is now free to use and register the trade mark BREWDOG ELVIS JUICE for beer and ale.

BrewDog –v- Elvis: background to the dispute

BrewDog launched its grapefruit and blood orange infused Elvis Juice IPA in 2015 which soon established itself as one of the company’s best selling beers.

In November 2015 BrewDog filed two UK trade mark applications. The first application was for the mark ELVIS JUICE and the second was for the mark BREWDOG ELVIS JUICE. The applications covered beer and ale. Both applications were opposed by ABG EPE IP LLC (‘ABG’), the company holding the trade marks of the Elvis Presley estate. The oppositions were based on a claimed likelihood of confusion with ABG’s EU trade mark registrations of ELVIS and ELVIS PRESLEY. These registrations cover various cleaning substances/cosmetics and a variety of food and drink products including beer.

Initial decision

In June 2017 the initial decision was issued in the dispute; the Hearing Officer found in favour of ABG, upheld the oppositions and refused both of BrewDog’s trade mark applications. The crux of the judgment was the Hearing Officer’s finding that the average consumer would consider Elvis to be the most prominent part of the ELVIS JUICE and BREWDOG ELVIS JUICE trade marks and would therefore be confused into mistakenly believing that products bearing either of those marks originated from the Elvis estate. BrewDog appealed to the Appointed Person.

The dispute highlights some interesting issues relating to the protection of famous names as trade marks.

Protecting famous names as trade marks

Numerous famous names have been registered as trade marks. Notable examples include KYLIE MINOGUE and DAVID BECKHAM. Generally speaking it is advisable for a famous person (or their representatives) to obtain a trade mark registration for his/her name since it will allow a degree of control as to how the name can be used in a merchandising context. However, the process is not always straightforward.

When used as a trade mark in relation to certain goods or services, it is possible that a famous name may appear to the average consumer as an indication that the goods/services are about the person whose name the trade mark concerns rather than an indication that the goods/services are supplied by, or under the control of one undertaking. If the famous name is so descriptive in relation to the goods/services for which registration is sought that it could not be perceived by consumers as anything other than a description of the subject matter of the goods/services then an application to register the name as a trade mark may be refused on the basis that the name is not capable of functioning as a trade mark (i.e. as a badge of origin). Even if registration is granted, it may be difficult to enforce it against third parties since it is permissible to use a trade mark to tell consumers what the subject of a product is. For example, even though the name DAVID BECKHAM is protected as a registered trade mark for calendars, the proprietor of the registration may find it difficult to prevent a third party from selling a calendar about David Beckham, provided that the calendar did not claim, or imply, that a commercial link exists between the proprietor of the DAVID BECKHAM trade mark and the party responsible for the calendars.

Appeal grounds

BrewDog argued that the Hearing Officer had assessed the likelihood of confusion incorrectly and had paid attention to certain facts that it shouldn’t have.

A principle known as judicial notice entitles the Hearing Officer to consider everyday facts as proven without having evidence led to support them; however, such facts need to be notorious otherwise the Hearing Officer risks straying into supposition, which is not permitted.

BrewDog argued that the Hearing Officer should not have taken judicial notice of the “fact” that when seeing the name Elvis in the context of beer the average consumer would think of Elvis Presley (a key factor in the Hearing Officer’s finding that consumers would be confused) because this could not be proven without evidence.

Appeal decision – likelihood of confusion?

The Appointed Person selected to hear BrewDog’s appeal case gave fairly short shrift to the appeal in relation to the ELVIS JUICE mark, dismissing it on the basis that the similarities between the marks are such that the average consumer would consider ELVIS JUICE beer and ELVIS beer to come from the same stable. Given the closeness of the respective marks, this decision seems logical.

Contrastingly, BrewDog’s appeal in relation to BREWDOG ELVIS JUICE was successful. The Appointed Person agreed with BrewDog that the Hearing Officer was not entitled to take judicial  notice that beer consumers who see the word Elvis would automatically think of Elvis Presley.

The Appointed Person also held that the mark BREWDOG ELVIS JUICE evokes numerous concepts (names, dogs, brewing and liquids) whereas Elvis is just a name.

Further, the ELVIS trade mark was held to be only averagely distinctive (in that it is a rather unusual name) and the element BREWDOG was held to be at least, if not more, distinctive than ELVIS.

For these reasons, the fact that the marks shared the common element Elvis was deemed insufficient for consumers to think that a commercial link exists between ELVIS and BREWDOG ELVIS JUICE. Despite the Appointed Person himself admitting that he would think of Elvis Presley when he saw the name Elvis as part of a product or brand name, it was held that BREWDOG ELVIS JUICE was just too different to ELVIS for there to be a likelihood of confusion on the part of the public (i.e. consumers would not think that two different beers one bearing the trade mark BREWDOG ELVIS JUICE and the other the trade mark ELVIS, originated from the same, or a commercially linked, company).

Reputation claim not maintained

An interesting aside in this case is the fact that ABG did not maintain its initial claim that its Elvis marks enjoyed a reputation in the UK (by virtue of being known by a significant part of the relevant public) and that the BrewDog’s trade marks took unfair advantage of that reputation. This ground was initially pleaded in both oppositions; however, the pleas were dropped before the opposition decisions were issued.

ABG presumably had good reason for not maintining its reputation claims. However, generally speaking where there is a risk that you might not be able to make a bullet-proof case for likelihood of confusion, it may be worth including and maintaining a claim that your registered trade mark enjoys a reputation (if appropriate) and that the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of your earlier trade mark. This is because the tests are different – even where the similarity between the opponent’s mark and the mark applied for is only low (and therefore it might be difficult to prevail on likelihood of confusion alone), in certain circumstances proof that the opponent’s mark has a reputation can carry an opposition over the line.

Take-home messages

This case serves as a reminder of the importance of persistence in trade mark disputes of this nature. Had BrewDog simply accepted the initial decisions, the likelihood is that it would have had to rename one of its most popular products; instead, as a result of its successful appeal, it should shortly obtain a UK trade mark registration for (and, perhaps more importantly, is free to carry on using) its BREWDOG ELVIS JUICE mark, surely one of its most important trade marks.

This case also highlights the fact that the protection of famous names as trade marks is something of a balancing act. By virtue of their fame, these trade marks enjoy broader protection in some senses (since reputation can help to offset differences between respective trade marks in a dispute); however, on the other hand, if a famous name is likely to appear to the average consumer as an indication that the goods/services are about the person whose name the trade mark concerns rather than as a badge of origin then, in certain circumstances, this is likely to make it difficult to register of enforce the mark against third parties (since famous names are not necessarily perceived as indications of commercial origin).

Matters are rarely cut and dried with trade marks and famous names are no exception: context is key!