Elvis Presley versus BrewDog: How far would you go to protect your brand?

As consumers, we meet a multitude of well-known brands in the food and beverage sector on a daily basis. Whether it’s choosing cereal or morning coffee, or choosing specific ingredients and garnishes for the evening meal. It therefore goes without saying that intellectual property protection for your food and drink business is vital, as it can turn an invention into  a valuable business asset, act as a hallmark of quality and act as a deterrent to prevent imitation from competitors.

Large corporations spend a lot of time and money investing and promoting their brands and protecting their vast portfolios of intellectual property by filing trademark applications for names, logos, packaging, slogans, colors, and sounds. However, it is equally important for brand owners to devote an equal amount of time and attention when it comes to actively enforcing and defending these rights against competitors.  In the following lines we will present an interesting case in which a craft beer company tried to register two trademarks, both in the United Kingdom and in the European Union, going to extreme lengths toacquire these valuable commercial assets.

Elvis Presley v. BrewDog Case

In 2015, Scottish craft beer company BrewDog launched a grapefruit and orange-infused beer, which it dubbed “Elvis Juice”.  In 2016, BrewDog tried to protect the ELVIS JUICE and ELVIS JUICE brands  in the United Kingdom for products that included beer.

Although Elvis Presley died in 1977, his name and likeness were registered by Elvis Presley Enterprises (EPE), which earns millions of dollars each year through a licensing program that grants the rights to produce and sell merchandise related to the singer worldwide. EPE objected and  filed formal notices of opposition on the basis of its trademarks  ELVIS  and ELVIS PRESLEY, which are registered for a variety of products, including beer. The EPE was able to oppose both demands. The reasoning was based on his apparent association with the late singer Elvis Presley, arguing that the BrewDog product violates his name and reputation. James Watt and Martin Dickie, founders of BrewDog, resorted to an unprecedented move, legally changing their first names to Elvis. This allowed them to assert that the beer was actually named after them, rejecting any association with Elvis Presley. However, this unorthodox method was unsuccessful for BrewDog, with the original UK court ruling ordering BrewDog to change its brand to the product.

BrewDog appealed against these decisions and  was successful with respect to the BREWDOG ELVIS JUICE trademarks, but was unsuccessful in appealing against the decision to register ELVIS JUICE.

The founders of BrewDog considered this ruling to be the “victory of common sense”, with the court arguing that the mere name Elvis alone is not enough on its own to confuse consumers and suggest a link between BrewDog Elvis Juice and Elvis Presley. Taking the matter even further, BrewDog celebrated in a somewhat extraordinary way, offering free drinks at its bars to all consumers who come dressed as Elvis.

Although BrewDog achieved success in the UK trademark infringement lawsuit, the likelihood of confusion was viewed differently by the European Union Intellectual Property Office (EUIPO), effectively preventing the use of the trademark ‘BrewDog Elvis Juice’, which was rejected even on appeal. In the case documents, the EU Intellectual Property Office ruled: It is clear that the applicant’s argument based on the peaceful coexistence of trademarks cannot succeed. No evidence was submitted to effectively demonstrate such a peaceful existence on the relevant market. The name ‘Elvis’, which is inherently distinctive, is reproduced in its entirety in the contested sign and is its most distinctive element.  In short… There is a risk of confusion. A likelihood of confusion for only part of the relevant public in the European Union is sufficient to reject the contested application.

This case highlights the importance of doing some research before pinning your hopes on a particular brand or brand name. A full availability check will identify earlier trade mark rights, reduce the risk of conflict with holders of earlier rights and ultimately also reduce the possibility of costly and lengthy opposition proceedings.