Taking on the King in a trade mark dispute

ElvisBy Gill Grassie.

Scottish craft beer producer Brewdog is toasting its recent victory over the Elvis Presley Estate (the Estate) after winning its appeal to register the trade mark Brewdog Elvis Juice (the Mark).

The application was initially refused by the UK Intellectual Property Office (UKIPO) in June 2017 based on the Estate’s prior registered trademarks, sparking a fightback from the owners, who even changed their own names by deed poll to Elvis, in a bid to strengthen their case.

So how did Brewdog win a trade mark battle against the King of Rock n’ Roll?

For trade mark disputes such as this, semantics can play a key role. The UKIPO compares the marks in question and the association an average consumer would make between the mark applied for and the existing mark(s).

In particular, it looks at the likelihood of a consumer being confused and believing (in this case) that the Mark – Brewdog Elvis Juice – signifies that products sold under it come from, are officially endorsed by or linked with the owner of a third party existing trade mark –  the mark ‘Elvis’ owned by the  Estate.

The UKIPO originally decided in the Estate’s favour and concluded that there was a likelihood that the Mark would confuse the average consumer. Elvis was considered to be the prominent part of the mark and the public would associate it with Elvis Presley.

There is only one Brewdog. The same cannot be said for Elvis.

However, one of the main reasons for Brewdog’s victory upon appeal is that Brewdog itself is an unusual name, invented by the company’s founders. The company has worked hard to establish and promote what is now, a well-known international brand.

In contrast to the original decision, the Appointed Person (AP),  who heard the appeal, considered Brewdog to be at least as well-known, if not more so than Elvis, (as opposed to the combination Elvis Presley). This meant that customers would not necessarily make a connection to the Elvis Presley when they saw the name Elvis used in the Brewdog Elvis Juice combination.

According to the AP there was a likelihood that Brewdog would be the more memorable and distinctive part of the Mark. Use of it as an invented and unusual word – and as the first part of “Brewdog Elvis Juice” – would mean that it was sufficiently different to the mark Elvis to avoid any confusion

The AP stated: “The word Brewdog, which evokes concepts of dogs brewing and juice….., alludes to a liquid, so Brewdog Elvis Juice  has numerous concepts (names dogs brewing and liquids) conjured in the mind , whereas Elvis is just a name…..as none of the elements dominate, there is a low level of conceptual similarity between the marks.”

In contrast, Elvis Juice, another mark Brewdog had applied for, was deemed too similar to Elvis and the appeal was refused, on the basis that the average consumer would think Elvis Juice and beer marketed under the Elvis mark would come from the same source.

On the whole this seems a sensible decision. The imaginative  and distinctive quality of the brand Brewdog, combined with its reach , means that there is little doubt that customers who see it as the first part of a mark are likely to  make the connection with the correct  source. There is – thanks in large part to Brewdog’s efforts in protecting its exclusive rights to its name as a brand – only one Brewdog. The same cannot be said for Elvis.

However, it does not mean that Brewdog’s owners are now free to market their Elvis Juice product in whatever manner they wish. They should not, for instance, use the word Elvis alone, or with Juice, separately to the word Brewdog in promotional material. This avoids possible future disputes over infringement of the Elvis – or indeed Elvis Presley – marks.

Choosing a product or business trade mark can be a complex and risky business, particularly when opting for one similar in wording or presentation to another existing, well-known mark or brand.

It is vitally important to carry out proper due diligence to ascertain infringement risk and clear the way to use and register the preferred mark before launch, or indeed before investing significant resources in developing it as a brand.

With this in mind, advice from IP legal professionals can be invaluable and ideally should be sought at the earliest opportunity to save what can be significant costs and embarrassment down the line.

Gill Grassie is Head of IP Dispute Resolution at Brodies LLP.