Scottish based craft ale brewery, Brewdog Plc ("BrewDog"), has recently had its trade mark applications to register "ELVIS JUICE" and "BREWDOG ELVIS JUICE" in Class 32 for beer and ale rejected by the UKIPO. The decision follows from an opposition filed by ABG EPE IP LLC, the US entity charged with the maintenance of the intellectual property rights belonging to the Elvis Presley estate.
Background
BrewDog expressly states on its website that it is "pretty relaxed" when it comes to intellectual property, a philosophy which has resulted in the full disclosure of its craft ale recipes. Ordinarily, these would be a fundamental trade secret for a brewery's business. BrewDog is more conventional when it comes to its trade mark portfolio, although it will refrain from taking enforcement action against a third party if at all possible.
In 2015, BrewDog applied to register ELVIS JUICE and BREWDOG ELVIS JUICE in Class 32 for beer and ale. Elvis Juice is BrewDog's grapefruit infused, American IPA which was launched in 2015. The applications were published on 5 February and 15 April 2016, triggering opposition from ABG EPE IP LLC, the US entity holding various existing trade mark registrations for ELVIS and ELVIS PRESLEY in the UK and EU and most significant jurisdictions for beverages.
The opposition was initially advanced under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994, although the 5(3) grounds were later withdrawn. Specifically, it was asserted that the applications were for similar trade marks and similar/identical goods, leading to a likelihood of consumer confusion. BrewDog challenged this on the basis that the marks were visually, aurally and conceptually different.
In October 2016, the founders of BrewDog, Mr James Watts and Mr Martin Dickie, changed their names to Elvis by deed poll in an attempt to demonstrate the lack of exclusivity in the name. The founders, unofficially, asserted that the beer was named after them, rather than the late Mr Presley.
Decision
The Registrar, Mr Olive Morris, held that the goods which the respective marks covered were identical. The average consumer was an adult who would most likely make a visual selection of the goods. It was held that, despite having died nearly 40 years ago, Elvis Presley was/is such an iconic figure that it would be surprising if many people had not heard of him. Elvis is an uncommon name and Mr Presley is the most famous Elvis. On that basis, consumers are likely to conceptualise use of ELVIS with Elvis Presley.
The Registrar then went on to consider the marks, which were to be assessed on a composite basis. The marks were visually and aurally similar, with a high degree of conceptual similarity. The absence of actual confusion was irrelevant as there was no parallel trade between the applicant and the opponent. Consumers were likely to think that ELVIS JUICE was a brand extension of the ELVIS trade mark, on the basis that ELVIS is so distinctive no other trader would likely use the mark. The average consumer would, therefore, assume the brands were from the same economically linked source, resulting in confusion. As such, the opposition succeeded.
The Registrar also ordered BrewDog to pay £1,500 as a contribution towards costs, assessed under the old Annex A to TPN 4/2007 as the opposition was lodged prior to 1 July 2016.
Comment
It is not yet known whether BrewDog intends to appeal the Registrar's decision or seek to negotiate some form of licence from the Elvis Presley estate. Arguably, the decision leaves BrewDog at risk to trade mark infringement and/or passing off proceedings being issued in the Civil Courts.
It was submitted by BrewDog that Elvis Juice is one of their bestselling beers, accounting for £1.9 million in turnover. The desire and interest to continue the manufacture and distribution of the beer, both in supermarkets and bars across the UK, may mean some form of commercial negotiations are imminent. As things stand, the appeal period has not yet expired.