Having refused to give a little less fight but instead a little more spark in the face of defeat, Scottish brewers BrewDog last week won its appeal against the decision of the UK Intellectual Property Office (UKIPO) to refuse registration of the trademark 'BREWDOG ELVIS JUICE'.
In June last year the UKIPO originally held that BrewDog could not register 'ELVIS JUICE' and 'BREWDOG ELVIS JUICE' as trademarks. This was on the basis that consumers would likely confuse the goods covered by the mark as coming from 'the same or a related undertaking' as those covered by the 'ELVIS' trademark. The appeal decision means the company can register the name 'BREWDOG ELVIS JUICE' for their grapefruit infused IPA, the company's third most popular beer. BrewDog were unsuccessful in their appeal against the UKIPO’s decision not to register 'ELVIS JUICE' alone.
Procedural background
This legal battle first started in 2016 when BrewDog attempted to register ‘ELVIS JUICE’ and ‘BREWDOG ELVIS JUICE’ as trademarks. BrewDog had been using the mark since July 2015. Following the company’s applications for registration, lawyers for the late King's estate demanded that BrewDog change the name of its Elvis Juice IPA. In response the company's founders, formerly known as James Watt and Martin Dickie, legally changed their names by deed poll to ‘Elvis Watt’ and ‘Elvis Dickie’ stating that there needed to be “a little less conversation and more time [spent] enjoying their beer”. This publicity stunt was initiated "to demonstrate the lack of exclusivity of the name 'Elvis'" according to a post on the company's website.
Initial decision
The UKIPO Hearing Officer initially found against BrewDog. The Hearing Officer determined that ‘both marks make reference to Elvis and [considered] that most average consumers will think of Elvis Presley’. He concluded that there was ‘a likelihood of indirect confusion and that the average consumer will assume that the goods come from the same or a related undertaking.’
Appeal
BrewDog appealed against this initial decision. Phillip Johnson, the Appointed Person (AP), who determined the appeal, concluded that the initial Hearing Officer was not entitled to ‘take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley’. This was despite the fact the AP himself thought of Elvis Presley when he first saw the mark 'ELVIS JUICE'. The AP drew a distinction between the two marks that BrewDog sought to register. He dismissed the appeal against the registration of the trademark ‘ELVIS JUICE’ but upheld the appeal for the registration of ‘BREWDOG ELVIS JUICE’. The AP found that 'BREWDOG' is at least, if not more, distinctive than 'ELVIS' and considered that "the common element of ELVIS is not enough on its own to make consumers think there is a link between the mark ELVIS and BREWDOG ELVIS JUICE". On that basis he found that there "would be no likelihood of confusion between ELVIS and BREWDOG ELVIS JUICE" but there was a likelihood of confusion between ELVIS JUICE and Elvis without the BrewDog name.
Conclusion
This latest ruling shows the strength of the BrewDog brand itself, holding its own against the name ‘Elvis’, recognisable worldwide as The King of Rock n' Roll. From this decision it is clear the importance the court will attribute to the conceptual differences between the two marks and how the common element of ‘Elvis’ is not sufficient to establish an economical link between the two marks when combined with the distinctive brand name “BrewDog”.
To celebrate its victory, this weekend on 3 and 4 February, BrewDog are giving away a free schooner of Elvis Juice to anyone visiting one of their bars across the world dressed as the King.
The full decision can be read here. If you have any queries in relation to this article please do not hesitate to contact John MacKenzie, Matt Phillip or Emma Read.