Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours

Date

12 March 1999

Legislation

Trade Marks Act 1938 ss. 9, 10, 12

Keywords

distinctiveness; registration of names; acquired distinctiveness

Counsel

Peter Prescott QC, Richard Meade,

Solicitors

Eversheds; Cameron McKenna

Judge

Robert Walker, Simon Brown, Morritt LJJ

Court

Court of Appeal

Reported

[1999] RPC 567

Summary

The Applicant was applying to register the marks ELVIS, ELVIS PRESLEY, and Elvis A Presley (as a signature) in respect of perfumes and other cosmetics, all which were opposed by the registered proprietor of the mark 'Elvisly Yours' in a cursive script in respect of a wide specification of goods relating to Elvis Presley.

Decision:

The Court held that none of the marks was entitled to be registered. In respect of the two word marks, it held that, for the purposes of sections 9 and 10 of the 1938 Act, they each lacked inherent distinctiveness, and there was no evidence adduced of acquired (or factual) distinctiveness. The goods to which the mark was to be applied were mere mementoes and memorabilia of the celebrity, and so it followed inevitably that the marks would not be distinctive in relation to those goods: 'TARZAN' [1970] RPC 450 followed.

In relation to the signature mark, the Court held that the applicant (on whom the burden of proof rested) had not shown that there was no reasonable likelihood of confusion by the public under section 12.

Lastly, the Court held that there was no protection in English law per se of the right to exploit a celebrity's name.

Note that the Trade Marks Act 1938 has been repealed and replaced by the Trade Marks Act 1994.

This case was considered in Diana, Princess of Wales Trade Mark [2001] ETMR 25.