Newbury Business Today
Charlotte Allery, commercial trainee solicitor at Newbury-based law firm Charles Lucas & Marshall (now part of Coffin Mew), comments on the recent trademark dispute that has got the beer world talking.
In a battle between the king of craft brewing and The King of rock and roll, the popular beer brand, BrewDog, has lost a legal fight with Elvis Presley’s estate over the name of one of its beers.
The Scottish brewers launched their grapefruit-based IPA ‘Elvis Juice’ in July 2015, with sales of more than £2m and over 415,000 litres to date.
In early 2016, the company filed trademark applications for ‘Elvis Juice’ and ‘BREWDOG ELVIS JUICE’ to protect the popular drink.
It wasn’t long before the suspicious minds of the Elvis Presley estate opposed the applications, having already registered the mark ‘Elvis’ for beers and other beverages.
The BrewDog founders responded by changing their names to Elvis by deed poll, to show that the name is not exclusive to the Heartbreak Hotel singer.
However, the Intellectual Property Office commented that Elvis Presley was ‘iconic’ and the ‘most famous of Elvises’, and concluded that BrewDog’s trademarks should be refused registration.
It considered there was a likelihood of indirect confusion between the marks, even with the addition of ‘BrewDog’ and ‘Juice’.
The hearing officer also regarded that the average consumer will assume that the goods sold under BrewDog’s marks come from the same or related undertaking as those sold under the already registered trademark ‘Elvis’.
This case is a useful reminder that, whilst trademarks and brand names should be memorable and easily roll off the tongue, brands should take care to select an original and unique name.
Trademarks are valuable assets and brand owners, like the Elvis Presley estate, will be quick to take enforcement action to prevent others from riding on their coat tails.
Charles Lucas & Marshall can assist you in managing your trademarks, whether you’re looking to register a new brand or expand your existing portfolio.
We can provide a view on whether a proposed trademark is capable of registration and carry out checks to establish whether your proposed mark is likely to conflict with those belonging to another business.
We can also support you with all steps of the trademark registration process.
If you would like to discuss this further, please contact our commercial team on (01635) 521212 or visit
www.coffinmew.co.uk for more information.
For BrewDog, it is now time for a little less conversation and a little more action, as they will need to decide whether to appeal the IPO’s decision and or reach a commercial deal with the Presley estate to obtain permission to use the Elvis name going forward.
For the time being, it appears that Elvis Juice has left the building…