In this case, Elvis Presley Enterprises are opposing a trademark registration of the trademark ElvisFINANCE by one Elvis Jelcic for Financial services, including mortgage lending and home loan.
The Australian Trademark Office rules against Elvis Presley Enterprises and also awards Elvis Jelcic’s legal costs against them.
As with the Not Your Average Backyard Variety Swing New Zealand case, really doesn’t EPE have better things to do? And are the Australian public really that likely to think this service has any connection whatsoever with Elvis’ estate?
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Elvis Presley Enterprises Inc. to registration of trade mark application 1100952(36) – ElvisFINANCE – filed in the name of Elvis Jelcic.
Applicant: Carmen Champion instructed by MatthewsFolbig Lawyers
Section 52 opposition – s.42, 43 & 60 grounds not established – costs awarded against opponent
- Elvis Jelcic (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:
- Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 29 June 2007.
- On 29 September 2007, Elvis Presley Enterprises Inc. (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.
- The following evidence has been served and filed in respect of the opposition:
|Declarant||Status||Date, Known as||Exhibits|
|Evidence in Support|
|Deborah Rochelle Bell||Articled Clerk||30 April 2007, Bell||DRB-1 to DRB-4|
|Roanna Karla Menezes||Solicitor||30 April 2007, Menezes||RDM-1|
|Evidence in Answer|
|Elvis Jelcic||Applicant||20 November 2007, Jelcic||EJ-1 to EJ-18|
|Stephen Jenkins||Solicitor||20 November 2007, Jenkins||SPJ-1 to SPJ-11|
- The opponent asked to be heard and the matter came before me as a delegate of the Registrar of Trade Marks in Melbourne on 15 September 2008. The opponent was represented by Ike Papageorge of Freehills Patent & Trade Mark Attorneys. The applicant was represented by Carmen Champion of counsel, instructed by MatthewsFolbig Lawyers.
- The Notice of Opposition cited virtually all grounds of opposition available to the opponent under the Act; however, in its submissions the opponent only relied upon the grounds of opposition under sections 42, 43 and 60. For the sake of completeness, my reading of the evidence indicates that no other grounds of opposition are supported and I treat them as having been abandoned.
- Exhibit DRB-1 of Bell contains a great deal of information obtained from the internet that establishes that one Elvis Aaron Presley (born 8 January 1935, died 16 August 1977) was an American singer, musician and actor. He was the most famous entertainer in the world in 1957, and his records and movies maintained a high degree of popularity during and after his lifetime.
- The opponent submitted that the main thrust of its argument would be directed to establishing the section 43 ground, and that the evidence would also support the remaining grounds of opposition.
- The opponent contends that the name “Elvis” is exclusively associated with the late Elvis Presley, such that the use of the name in the applicant’s trade mark will inevitably carry the clear connotation that the applicant’s financial services have earned the endorsement or support of Elvis Presley and connotation of endorsement by the opponent.
- The opponent accepted that “without more, merely invoking a reference to a deceased celebrity cannot deceive or confuse”: Executors of the Estate of Diana, Princess of Wales (Deceased) v Masterson (2001) 52 IPR 264 (“Masterson”) at 272; however, it was submitted that a reference to Elvis would inevitably be assumed to be a reference to Elvis Presley because he was such a well known and loved public figure, whose name was often used as an endorsement on an incredibly broad range of goods and services. As a result, the presence of the word “Elvis” in the trade mark would be likely to confuse or deceive.
- The opponent accepted that “without more, merely invoking a reference to a deceased celebrity cannot deceive or confuse”: Executors of the Estate of Diana, Princess of Wales (Deceased) v Masterson (2001) 52 IPR 264 (“Masterson”) at 272 [this case was in respect of an application to register DIANA’S LEGACY IN ROSES]; however, it was submitted that a reference to Elvis would inevitably be assumed to be a reference to Elvis Presley because he was such a well known and loved public figure, whose name was often used as an endorsement on an incredibly broad range of goods and services. As a result, the presence of the word “Elvis” in the trade mark would be likely to confuse or deceive.
- The opponent relied very much on McCorquodale v Masterson (2004) 63 IPR 582  FCA 1247 (“McCorquodale”), a successful appeal from Masterton, above, to support its submission that it is common and expected that when the name of a famous person is used commercially, it will be seen as an endorsement. Indeed, the opponent saw its case as stronger than that of the estate of the late princess of Wales, since Elvis Presley has been associated with a large number of commercial endorsements, whereas the late Princess had not.
- The applicant submitted that the mark ElvisFINANCE does not of necessity convey a clear reference to Elvis Presley, the singer. The word ‘finance’ conveys the nature of the business conducted by the party trading under the said name. It was submitted that there is no evidence that there was ever a link created between the singer Elvis Presley and the provision of financial services. This situation was, it was submitted, unlike that in McCorquodale where Kenny J found that the evidence supported a finding that the name “Diana” indicated a connection with the late princess of Wales and that it also established an association between the princess and roses.
- While it is true that the name “Elvis” has an ancient heritage, originally being a reference to elves, and there are many people sharing the given name, it must be accepted that its use does tend to make most people think of Elvis Presley. Indeed, counsel for the applicant conceded that the singer Elvis Costello was born Declan Patrick MacManus and changed his stage name partly as a reference to Mr Presley.
- While it is very possible that the use of the word “Elvis” in the application would cause some people to think of the late American singer, as Kenny J said in McCorquodale at paragraph 33, “[T]he question is whether, because of this connotation, the respondent’s proposed mark is likely to deceive or cause confusion”. Justice Kenny went on to discuss the fact that there was a large amount of evidence in respect of the Princess of Wales and roses to establish that question
- In my opinion, the evidence in this matter does not establish such a connection with Elvis Presley and mortgage lending and home loans. It must be remembered that in the case of the late Princess of Wales, she had already allowed her title to be used in respect of a variety of roses, she was referred to as “England’s Rose” by Elton John in a song at her funeral, her funeral procession was deluged by flowers, and the term “legacy” in the opposed mark did tend to suggest a connection with the estate of the late Princess.
- The use only of the name “Elvis” next to the word “FINANCE” is not enough to cause a likelihood of deception or confusion. If the applicant were to embellish the mark with anything that would suggest Mr Presley, such as guitars, the word “King”, white jump suits, or suchlike, then the opponent might have remedies in another jurisdiction. However, I find that this ground of opposition is not established.
- Section 42 of the Act provides:
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
- The opponent submitted that the applicants use of the trade mark would be a breach of relevant laws proscribing misleading or deceptive conduct, and for the same reasons as propounded for the section 43 ground.
- Noting that section 42(b) requires that I be satisfied that use of the mark ‘would’ be contrary to section 52 of the TPA, for the reasons I have stated in respect of the section 43 ground, I do not find this ground established.
- The opponent did make brief submissions that the opponent owned 32 trade marks in Australia comprising the word “Elvis”, that would be cited for the purposes of section 60 of the Act.
- Section 60, as relevant to this application, provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.
- This ground was not actively pursued, and I am of the opinion that there is no real tangible danger of deception or confusion occurring despite similarity between the application and cited trade marks the reputation of Elvis Presley. I find that this ground of opposition is not established.
- Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
- I find that none of the grounds of opposition have been established.
- The trade mark application may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
- Both parties sought their costs. I award costs against the opponent pursuant to the official scale.
Trade Marks Hearings
24 December 2008