Scottish craft brewery BrewDog has lost a trade mark dispute concerning their grapefruit infused IPA named ‘Elvis Juice’. UK IPO held that the registered trade mark rights of the Elvis Presley estate have been infringed by drawing a link between the star and the alcoholic beverage. As a result, the registration of the ‘Brewdog Elvis Juice’ and ‘Elvis Juice’ marks has been refused and the company may be forced to find a new name for their product.
This decision comes after two of the BrewDog’s founders went to great lengths in order to prove the name in question is not exclusive to the late King of Rock and Roll, by legally changing their forenames to Elvis. It is now clear that this move did not bring about the desired outcome, but it brought attention to a wide-spread issue – wrongful association between two undertakings, where one of them enjoys good reputation, and the other is perceived as taking unfair advantage of such reputation.
The reasoning behind the UK IPO’s decision to rule in favour of the Presley estate was based on the combination of two factors described in the Section 5 of the Trade Marks Act 1994. Firstly, the ‘Elvis’ (trade mark registered by the estate), ‘BrewDog Elvis Juice’ and ‘Elvis Juice’ marks were found to be highly similar. Secondly, although the goods in question are not identical or similar to the goods the estate produces or licences the production of, the reputation of the ‘Elvis’ mark was held to be strong enough to outweigh this. Moreover, UK IPO was of the opinion that the consumers may believe the ‘Elvis Juice’ beverage has been endorsed by the Presley estate, resulting in wrongful association.
Looking at the current legal framework and the legendary status of Elvis Presley’s name, this outcome is hardly surprising. However, BrewDog managed to pull a rabbit out of the hat by turning this seemingly hopeless situation into a great publicity stunt. The brewery gained a significant amount of attention from the media, their products were promoted, and the Presley estate’s reputation may end up suffering due to its participation in this David versus Goliath fight. The question thus remains: Who is the real winner here?
Should you have any queries regarding trade mark registration or protection of your existing trade marks, please get in touch with Paul Carlyle, Ashley McLean or your usual Shepherd and Wedderburn contact.