Trade marks and the ELVIS wars – pick your fights carefully?

Who would have thought we would see a Scottish based brewery taking on the might of the Elvis Presley Estate in a trade mark dispute? Well expect the unexpected in the world of trade marks.

Founders of the popular BrewDog brand have apparently been advised by the owners of Elvis Presley Estate that they are not entitled to use the term ‘Elvis Juice ‘ for their product – blood and orange infused IPA. BrewDog has applied for registered trademarks for ‘Elvis Juice’  and ‘Brewdog Elvis Juice’ and the Estate has also opposed these. Rather than back down and withdraw the applications and /or stop use of the term , BrewDog’s founders have reacted in an unusual way.

They have apparently changed their personal names to Elvis Watt and Elvis Dickie respectively. Their website has announced this and suggests that they “could even lodge a counter-complaint aimed at Mr Presley himself for all the records he put out without Elvis Watt and Elvis Dickie’s permission! And if that doesn’t keep them busy enough, we would like to recommend that they divert their attention to another potential source of quick remuneration: a brewery that calls itself ‘The King’ of beers.”

Of course these name changes will not give them a defence to any claim for trade mark infringement which might be made. Although there is an own name defence it only applies if it is in accordance with “honest practices”.

Here, where the changes of name have happened after receipt of the notice, the Estate would no doubt argue that they should not be viewed as meeting those requirements. In any event these are the names of the individuals only and not the company name, which still contains the name BrewDog. As it is the entity that is trading using the names in dispute then it is what it is called that matters.

Of course, these are not likely to be intended as a serious challenge to the Estate’s threats. Rather it is more likely that BrewDog is underlining its belief that the intellectual property rights in this case are being pushed too far. It may well also be deliberately endeavouring to harness the considerable power of public opinion in this situation.

Clearly though there are two sides to every story. The Estate will own a large number of trademarks for and including the word ‘ELVIS’ and will want to ensure the name does not become generic such that the trade mark rights could be lost – along with the considerable royalty revenues that it can no doubt command on merchandising. Unauthorised use of the name as a trade mark by a third party for goods or services for which the mark is registered (or similar to those where there is likely to be confusion) will infringe those rights. Furthermore the Estate’s marks are likely to have acquired the enhanced status of marks with a reputation. This means the monopoly that these marks can command goes further than that of ordinary marks and can even include  use for dissimilar goods and services, and need not result in likelihood of confusion. For example, taking undue advantage of the mark’s repute or causing detriment to it can be enough. Thus in this case there are at least  some legal arguments that  could  be made in support of claim of infringement. Passing off is also another possible angle.

However these legal niceties may prove to be irrelevant in face of the tsunami of public opinion that can now be readily voiced via the internet in social media and otherwise. BrewDog’s fanbase could end up taking on the Elvis supporters in that public arena and how such an exchange plays out may well be a factor taken account of the Estate in deciding its next best steps. It will likely want to avoid or mitigate bad publicity if that is viewed to be the most likely result of sticking to its guns here.

This case illustrates how these days the law of brands and trade mark can become largely irrelevant to how it is applied and enforced in practice. Whether we like it or not it is being influenced more and more by public opinion. Could this be a way to rebalance the odds in the often reported ‘David and Goliath’ type battles and give the ‘underdogs’ a fairer crack of the whip or should it be viewed as an illegitimate way to skew the application of law in their favour?