Trademark disputes involving breweries are nothing new, with breweries battling each other, wineries, and even cities over trademarks. We can now add estates of dead celebrities to the mix, as the Estate of Elvis Presley continues its battle against UK-based BrewDog over its ELVIS JUICE I.P.A.

The Elvis Estate first attempted to resolve the dispute through a cease and desist letter. In response, BrewDog’s owners, James Watt and Martin Dickie, changed their first names to “Elvis.”

And before you ask, yes, the above picture is just a marketing version of the official name change document. Although the battle has been waged for decades with the U.K. Employment Agency, “Beer Pirate” is not yet an officially recognized title. For the potential Elvis fans with the proclivity toward belief in aliens and other conspiracies, the official documents are also available here.

When BrewDog failed to heed the Estate’s demand of “Don’t,” the Estate brought an action against BrewDog at the U.K. Intellectual Property Office. Apparently the UKIPO was unmoved by the Elvis Brothers’ claims and, in July of 2017, the Estate prevailed.  But before Elvis could leave the building, BrewDog appealed. Apparently the appellate body had a few more suspicious minds. Just last week, the appellate body reversed the prior decision, concluding:

On balance I do not think that the hearing officer was entitled to take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley. The two marks are too different for there to be direct confusion. Even with imperfect recollection the average consumer will not mistake Brewdog Elvis Juice for Elvis. Put simply, the common element of Elvis is not enough on its own to make consumers think there is a link between the mark Elvis and Brewdog Elvis Juice.

As the quote suggests, the UKIPO’s decision was based specifically on a trademark that includes the brewery’s house brand BREWDOG. This may mean some extra steps for the brewery to ensure that BREWDOG always appears in close proximity to the ELVIS JUICE trademark, but the steps may be worth it to protect BrewDog’s growing investment in the name. BrewDog recently expanded operations, opening a satellite brewery in the United States near Columbus, Ohio. On top of that, BrewDog even won a bronze medal in its first appearance at the Great American Beer Festival last year.

Although the Elvis Estate may be licking its wounds somewhere in the heartbreak hotel, the war isn’t over yet. As you might expect, the UKIPO’s office has no authority here in the U.S. In fact, BrewDog has a pending application for the mark BREWDOG ELVIS JUICE that was approved for registration by the U.S. Trademark Office. On December 27, the company that manages the intellectual property on behalf of the Elvis Estate filed a Request for Extension of Time to Oppose the application. Will the recent loss temper the Estate’s position? Or is it now or never for the Elvis Estate to make a stand? We might have a better idea after April 25, when the Estate’s first extension request runs out.

As of the date of publication, there is no word on whether Elvis Costello also objects to BrewDog’s beer.

Lauren Millward, Solicitor, Browne Jacobson LLP

In recent times trade mark law in the UK has developed to comply with the fundamental principles of the EU including the free movement of goods and services within the EU. The decision of the Court of Appeal in the UK in Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd is important in this respect and relates to parallel importing of pharmaceutical products within the EU.

Speciality European Pharma (SEP) sold a drug (tropsium chloride) in the UK, under an exclusive licence. The drug was sold under the trade mark REGURIN in the UK, CERIS in France and URIVESC in Germany.

Doncaster, a parallel importer of pharmaceutical drugs had, for many years, imported CERIS from France but over-stickered the box with the name of the drugs’ active ingredient, tropsium chloride.

Shortly after expiry of the patent in the drug, generics manufacturers entered the market in the UK. Doncaster, as a parallel importer, could not compete on price with those generics manufacturers and instead began importing the drugs CERIS from France and URIVESC from Germany into the UK and re-branding those drugs with the UK trade mark REGURIN.

SEP argued that Doncaster’s rebranding in these circumstances infringed SEP’s trade mark in the REGURIN mark.

The Trade Mark Directive deals with exhaustion of the rights of the trade mark owner at Article 7, however it doesn’t precisely apply in this case as it relates to the use of a trade mark where goods have been put on the market in the EU under that mark. The drug in these circumstances had been put on the market under the CERIS and URIVESC marks respectively but the claim related to use of the REGERIN mark.

The court therefore looked outside of the provisions of the Trade Mark Directive at the Treaty on the Functioning of the EU. In particular, Article 34 prohibits between Member States quantitative restrictions on imports and all measures having equivalent effect. There is an exception to this in Article 36 where prohibitions or restrictions on imports are justified on grounds of the protection of industrial and commercial property (such as trade marks). Such prohibitions or restrictions must not however constitute a means of arbitrary discrimination or a disguised restriction on trade.

The judge considered that the enforcement of a National trade mark having territorial effect in one Member State could be a measure having the effect of a prohibition on imports, however, enforcement of that trade mark would not be prevented by Article 34 where that enforcement is justified for the protection of that trade mark. The principle of free movement of goods must therefore be balanced against the protection of the relevant trade mark.

By having in place different trade marks for the same product in different Member States the court held that there was an unjustified “artificial partitioning of the market” by the trade mark owner constituting a disguised restriction on trade.

Although Article 7 didn’t apply in these circumstances, the court considered that the case law under that Article concerning re-packaging of products was relevant. The cases of Bristol-Myers Squibb v Paranova and Boehringer II in particular held that where a parallel importer re-packages goods, the following conditions must be satisfied to prevent infringement:

  1. The repacking must be objectively necessary to avoid market partitioning;
  2. The condition of the product must not be effected;
  3. The manufacturer and the importer must be clearly identified;
  4. The reputation of the mark and its owner must not be damaged; and
  5. The importer must give notice to the trade mark owner.

The court considered in particular whether the re-branding of the product from CERIS and URIVESC was objectively necessary to avoid market partitioning. Overturning the first instance decision, it was held that it was objectively necessary. Doncaster was effectively excluded from a proportion of the market where the brand REGERIN was prescribed, rather than the generic version. Although that was a small proportion of the overall market (the majority of the prescriptions were made under the generic name), that proportion was a substantial part and therefore the enforcement of the trade mark REGERIN by SEP was unlawful partitioning of the market.

This decision makes it difficult for trade mark owners to benefit from the strong brand built up under a trade mark during patent-protection. It was held that it was unreasonable to expect Doncaster to create its own brand and to compete with the trade mark owner, particularly considering the high costs of marketing and Doncaster’s lack of control as a parallel importer over its own supply chain (meaning that it is unlikely that doctors would rely on Doncaster’s brand). Re-branding to the REGURIN brand was therefore necessary in these circumstances to allow for effective access to the market.

Although each case will turn on its facts considering, this decision is in favour of parallel importers in the EU and suggests that, in the majority cases, the principles of free movement of goods will prevail over the rights of a trade mark owner.

 

Nicola Hill, Associate and Jude King, Trainee Solicitor, Browne Jacobson LLP

This is the era of celebrity. It has become a global commercial enterprise in its own right. From launching personalised perfume ranges to being the face of fashion houses, there can be no doubt that celebs are a high value commodity. As such, every star wants to protect their image or name. Yet whilst many states in the US recognise a ‘right of publicity’ – the right to control the commercialisation of their own image – such a right has never existed under English law. As Colin Birss J succinctly put it at first instance in this case:

“Whatever may be the position elsewhere in the world, and however much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image.”

This position was confirmed recently by the Court of Appeal (CA) in Fenty v Arcadia, who upheld Rihanna’s $5 million claim in passing off against the British fashion retailer, Topshop, but denied the existence of an image right under English law. It came as a mixed blessing to many in the celebrity field, who had pinned hopes on Rihanna’s case being an opportunity to finally introduce image rights into the UK.

The case involved a well-known UK fashion retailer Top Shop – a store synonymous with London cool. Topshop began selling a t-shirt featuring an image of RiRi herself both online and in their stores. Despite having a licence from the photographer allowing them to use the image, Topshop did not have Rihanna’s permission, who then complained to Top Shop that the sale of the t-shirt without her permission infringed her rights. Topshop’s response, one could say, was that she should just ‘shut up and drive’.

Rihanna subsequently brought proceedings against the fashion giant alleging passing off (N.B. this is a long-established English common law tort requiring the Claimant to prove goodwill, misrepresentation and damage).

At first instance, Birss J clarified that English law does not treat merchandising and endorsement differently; what is required for both is that a substantial portion of those considering the product will be induced to think it is authorised by the artist, and that they are in some way responsible for their quality/appearance. He considered the evidence at hand and found that Rihanna met all three criteria. Rihanna was thus successful and granted protection under the, ahem, ‘umbrella’ of the English legal system.

On 22 January 2015, the CA delivered its judgment. It upheld the first instance decision, concurring that Rihanna had the requisite goodwill in the goods in question, both as a style icon in her own right and having her own fashion line and collaborations with companies such as Gucci and one of Topshop’s biggest rivals, River Island. The CA further found misrepresentation on the facts because Rihanna had previous associations with Topshop and also the image appeared to be a publicity shot for her then current album ‘Talk That Talk’ so the relevant public were likely to be deceived into thinking that the product was authorised by Rihanna. Damage was proven through the loss of merchandising business in addition to loss of control over her reputation. It was held that Birss J was correct in upholding passing off, but to the disappointment of many, there was no likelihood of the CA introducing an image right any time soon.

Further, the CA was at pains to reiterate that this case turned squarely on its facts and that the sale of clothing bearing recognisable images of celebrities does not, in itself, amount to passing off. This case is clearly not designed to open the floodgates for false endorsement claims.

So what does it mean going forward? Firstly, there is clearly no intention to introduce a US-style image right into the UK. Neither is it intended that passing off becomes a back-door personality right. What Fenty does do, however, is to send a clear message to English retailers and designers to exercise caution in using celebrity imagery. It also gives our superstar clients a glimmer of hope that, in the right circumstances at least, they might be able to take back some control over use of their image in England. So for that… Take a Bow, Rihanna.

Many people will access eBay this month to purchase that special gift for the holidays. In doing so, there are many products listed on eBay that are associated with valuable trademarks.   

In a previous blog post, “New York Provides No Assistance to ‘The Little Blue Box’ Company,” we informed you that a district court had found that Tiffany & Co.—not eBay—was responsible for protecting its brand and trademark on the auction site. In other words, eBay was not responsible for keeping its users from selling fake jewelry with the Tiffany & Co. name. eBay was only required to take appropriate action after it had received notice of the infringement, presumably from Tiffany & Co.  Since this post, the United States Court of Appeals for the Second Circuit affirmed the decision for the most part. The only issue remanded back to the district court was whether eBay’s use of Tiffany & Co.’s trademarks constituted false advertising.

In May 2009, the United Kingdom had issued a ruling in favor of eBay that it was not liable in connection with trademark infringement claims brought by L’Oréal SA, but had referred the question of what eBay should have to do to stop parties from selling infringing products to the European Court of Justice.

Last week, the advocate general to the European Court of Justice issued an opinion recommending vindication for eBay from L’Oréal SA’s trademark infringement claims. Specifically, he held, among other things, that eBay was not liable: for using trademarks as keywords or for trademark images posted by its users. The opinion discussed the differences between a paid Internet referencing service provider such as Google (where a recent EU decision had found it not liable for trademark infringement) and an operator of an electronic marketplace such as eBay. The advocate general opined that an operator of an electronic marketplace (such as eBay) benefits from the sale so it should be treated differently. Accordingly, once such an operator had knowledge of the infringement and failed to stop it, then the operator could be found liable. Although his opinion is not binding, the European Court of Justice will consider the advocate general’s opinion in issuing its own decision.

Trademark infringement is not the only intellectual property dispute facing eBay. It also is being sued in Delaware by XPRT Ventures LLC for patent infringement. Specifically, the suit relates to e-commerce payment systems (e.g., Pay Pal’s pay later, checkout system, buyer credit and balance manager). There are even allegations that eBay attempted to patent XRPT’s technology as its own.

These will likely not be the last actions brought against eBay involving intellectual property.

–Dan Kelly, Attorney

Professors at the University of Pennsylvania and at UC Berkeley School of Law released a study this week conclusively titled “Americans Reject Tailored Advertising,” suggesting that there is high resistance among individuals to tailored advertising on the Internet.  (Press release from Penn here, NYT coverage here.)  Although I have been unable to download a copy of the study, it apparently suggests that there is a desire for legislation in this area.  From the Penn press release:

The Berkeley-Annenberg team found that 92 percent of those polled agree there should be a law that requires websites and advertising companies to delete all stored information about an individual, if requested to do so.  Sixty-three percent believe advertisers should be legally required to delete information about their internet activity immediately, whether requested or not.

Apparently, these findings are not without controversy.  In March, a company called TRUSTe, a self-proclaimed “leading internet privacy services provider,” released survey results suggesting that people are increasingly comfortable with being tracked on the Internet, and that they are really more annoyed by advertising that is irrelevant to their needs and wants.

I have not had the chance to wade through both studies, each of which is based upon its own survey of about 1,000 individuals, but it seems to me simply from reading the press releases related to each that both studies suffer from problems of bias.  In addition, I ran across a headline this week that sales of Internet advertising are outpacing sales of TV advertising in the U.K.  I understand that this statistic is not directly on point:  it is U.K. data, not U.S. data, and it does not distinguish targeted ads from non-targeted ads.  Even so, it seems to me that whatever the studies and surveys supposedly say, or are designed to convey, there seems to be a rather robust market for advertising on the Internet.