Charlotte Allery, commercial trainee solicitor at regional law firm Coffin Mew, looks at the recent trademark dispute that has got the beer world talking
In a battle between the king of craft brewing and The King, the popular beer brand, BrewDog, has lost a legal fight with Elvis Presley’s estate over the name of one of its beers.
Having built a strong reputation for its innovative marketing campaigns and attention-grabbing product names, the Scottish brewer launched its grapefruit-based IPA Elvis
Juice in July 2015. With sales of more than £2 million and over 415,000 litres to date, the company was keen to protect the drink and filed trademark applications for Elvis Juice and BREWDOG ELVIS JUICE in early 2016.
But 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 estate is typically very protective of its intellectual property and has previously sued American gunmaker Beretta over an ad campaign that allegedly exploited Elvis’ “iconic status”.
BrewDog is no stranger to trademark disputes. Earlier this year, the company caused a social media backlash when it emerged that a Birmingham pub, The Wolf, was forced to drop its original name, The Lone Wolf, after it received a legal warning from BrewDog which sells a spirit bearing the same name. While BrewDog dismissed this as their lawyers “getting trigger happy”, it subsequently emerged that BrewDog had also raised an objection to a bar in Leeds called Draft Punk, citing their popular Punk IPA.
BrewDog founders, James Watt and Martin Dickie, responded to the Presley opposition by changing their names to Elvis by deed poll, to show that the name is not exclusive to the Heartbreak Hotel singer. Referring to the distinctiveness that BrewDog’s trademarks had obtained, their lawyers also argued that the applicant is an “industry leader” and that its products have a “cult following”.
Unfortunately for the brewer, the Intellectual Property Office commented that Elvis Presley was iconic and the “most famous of Elvises”, concluding that both of BrewDog’s trade marks should be refused registration. It considered that 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. While the officer accepted that BrewDog “may have something of a reputation”, he considered that there would still be a significant number of average consumers who will not have heard of it.
This case is a useful reminder that while trademarks and brand names should be memorable and easily roll off the tongue, breweries and beverage brands alike 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 eenforcement action to prevent others from riding on their coat tails.
Unfortunately, it’s now or never when it comes to selecting a clever brand name, with beer companies nearly exhausting the supply of beer puns (for example, see AleSmith’s Java the Nut, Ruckus’ Hoptimus Prime and
Manchester based brewers TicketyBrew).
It is now time for a little less conversation and a little more action from BrewDog, which will need to decide whether to appeal the IPO’s decision or reach a commercial deal with the Presley estate to obtain permission to use the Elvis name going forward.
The future for the beer is unclear but, for the time being, it appears that Elvis Juice has left the building.