Elvis Presley Enterprises Inc v Sid Shaw (Elvisly Yours)

A famous person’s name is not inherently distinctive as a trade mark merely because the public uniquely associates it with that person. The question is whether the mark distinguishes the proprietor’s goods by trade origin, rather than describing the character or subject matter of the goods. In the field of memorabilia, names and images may be descriptive of the goods themselves, particularly where the public buys the name or image rather than goods from a particular source. Any claimed public assumption of licensing or endorsement requires evidence in the circumstances of the case. A signature may be prima facie distinctive, but registration may still be refused where its use would be likely to deceive or cause confusion with an earlier mark.

Elvis Presley Enterprises Inc applied under the Trade Marks Act 1938 to register the marks ELVIS, ELVIS PRESLEY and a signature mark for toiletries and related goods. Sid Shaw, trading as Elvisly Yours and proprietor of the mark ELVISLY YOURS, opposed the applications.

The Registrar rejected the opposition. Laddie J allowed Mr Shaw’s appeal and directed refusal of the applications. Enterprises appealed to the Court of Appeal. The central issues were whether the marks were distinctive or capable of distinguishing under sections 9 and 10, and whether their use would be likely to deceive or cause confusion under sections 11 and 12.

1. Appeal dismissed. The marks were not registrable under the Trade Marks Act 1938, although the judges differed on the authenticity issue concerning the signature mark.
2. A trade mark must indicate a connection in the course of trade between the goods and the proprietor. It must distinguish the source of the goods, not their type, quality or character. Under section 9, distinctiveness is required throughout the statutory categories. A mark falling within section 9(1)(a) to (d) may be prima facie distinctive, but that may be insufficient where registration is opposed.
3. The word ELVIS had very little inherent distinctiveness for goods marketed as Elvis Presley memorabilia. The goods were purchased because they bore the name or image of Elvis Presley, rather than because they came from a particular commercial source. The reasoning in Tarzan trade mark [1970] RPC 450 applied. The name directly referred to the character or subject matter of the goods.
4. The addition of the surname in ELVIS PRESLEY did not improve distinctiveness. Under section 10, both inherent and factual capability to distinguish had to be shown. Enterprises had no sufficient evidence of United Kingdom use, and the court would be slow to infer that the public associated toiletries with Enterprises merely because Elvis Presley was famous.
5. There was no general rule that use of a celebrity’s name necessarily implied licensing or endorsement. The character-merchandising authorities did not establish a free-standing exclusive right to exploit a celebrity’s character. Any such question depended on the facts and on the particular cause of action.
6. Lord Justice Robert Walker considered the signature mark distinctive under section 9(1)(b), once its authenticity was accepted, but agreed that its resemblance to ELVISLY YOURS created a likelihood of deception or confusion under sections 11 and 12. Lord Justice Morritt would have rejected the signature application because Enterprises had not proved authenticity. Lord Justice Simon Brown agreed with Walker LJ on all points and with Morritt LJ except on authenticity.

• Court of Appeal (Civil Division): appeal from Laddie J dismissed; refusal of all three applications upheld.
• High Court, Chancery Division: Laddie J allowed Mr Shaw’s appeal from the Registrar and directed the Registrar to refuse the applications.
• Registrar of Trade Marks: opposition dismissed and registration not refused on the pleaded grounds.