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CH 1996 E No 1337
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Before: THE HON. MR. JUSTICE LADDIE
TRADE MARKS ACT 1938 (AS AMENDED)
AND TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATIONS NOS. 1371 624, 1 371 627 AND 1 371
637 BY ELVIS PRESLEY ENTERPRISES INC
AND IN THE MATTER OF CONSOLIDATED OPPOSITIONS THERETO BY SID
SHAW ELVISLY YOURS
Mr.R.Meade instructed by McKenna & Co for the
Appellant/Opponent
Mr.P.Prescott QC instructed by Eversheds for the
Respondent/Applicant
Hearing dates: 3,4 March, 1997
JUDGEMENT
I direct that pursuant to RSC Order 68 r.1 no official shorthand note
shall be taken of this judgment and that copies of this version as handed down may be
treated as authentic.
The Hon. Mr. Justice Laddie
DATED: 18 March 1997
The text below is the full text of the Judgment
given at the High Court of Justice in London on 18 March 1997 in favour of Mr Sid Shaw
(for Elvisly Yours) against Elvis Presley Enterprises Inc.
It is a long document, but for ease of navigation we have broken
it down into the Judge's own sub-sections as listed below:
Mr Justice Laddie (The Judge)
Dramatis Personae (The main characters)
Elvis Presley
Elvis Presley Enterprises Inc
Mr Sid Shaw (Elvisly Yours)
Evidence of Use
Other circumstances
Mr. Justice Laddie:
On 26 January 1989 Elvis Presley Enterprises Inc.
("Enterprises") of Elvis Presley Boulevard, Memphis, Tennessee in the United
States of America applied to register three trade marks under the provisions of the Trade
Marks Act, 1938. The first, numbered 1371624, is for a manuscript version of the name
"ELVIS A PRESLEY". This mark was referred to before me as the "signature
mark". The second mark, numbered 1371627, is for the word "ELVIS" simpliciter
and the third, number B1371627, is for the words "ELVIS PRESLEY" simpliciter.
All three marks are sought to be registered for the following specification of goods;
"Toilet preparations, perfumes, eau de colognes;
preparations for the hair and teeth; soaps, bath and shower preparations; deodorants,
anti-perspirants and cosmetics; all included in Class 3."
On 16 June 1991 all three were opposed by Mr. Sid David Shaw.
Amongst the grounds of objection raised by Mr. Shaw were those of lack of distinctiveness
under ss. 9 and 10 of the 1938 Act and deceptiveness under s. 11 and under s. 12 as a
result of an alleged conflict with a trade mark registration of his own. He represented
himself before the Registry. On 31 January 1996, Mr. Tuck acting for the Registrar,
dismissed the opposition. Mr. Shaw now appeals from that decision. Before me Mr. Shaw was
represented by Mr. Meade and Enterprises was represented by Mr. Peter Prescott QC.
Dramatis Personae
Elvis Presley
Mr. Presley was born in Tupelo, Mississippi, USA in 1935. He was
a rock and roll singer who first came to public attention in the early 1950's. He soon
became internationally famous and he so remained up to his death in 1977. Such was his
popularity that he was made the star in a series of generally light hearted feature films.
If his abilities as an actor did not match his abilities as a rock and roll singer,
nevertheless the films contributed to the enormous fame which he had acquired by the time
of his death. Since then, his home, a sizeable white painted mansion in Memphis called
"Graceland", has become something of a shrine and is visited by large numbers of
fans together with other inquisitive members of the public. At Graceland large numbers of
souvenirs and memorabilia referring to or depicting Elvis Presley are on sale. There is no
doubt that the name, "Elvis Presley", continues to conjure up in the mind of a
very large part of the population in this country the image of the now-deceased rock and
roll performer. I take judicial notice of the fact that over the years there have been
numerous programmes on television and radio and articles in newspapers and magazines which
centred on or made reference to Elvis Presley. He must be counted amongst the most well
known popular musicians this century.
Enterprises
As mentioned above, Enterprises is a company incorporated in the
USA. Although there is no direct evidence on the issue before me, it appears that
Enterprises in some way carries on and has expanded on the merchandising activities which
had been carried on by or on behalf of Elvis Presley before his death. Mr. Shaw has not
disputed that Enterprises should be considered as successors in title of Elvis Presley's
merchandising activities. In response to Mr. Shaw's evidence filed in support of his
opposition, Enterprises served a single brief statutory declaration by Mr. Jack Soden, its
Chief Executive Officer. Mr. Soden has been connected with Enterprises since 1982.
Mr. Sid Shaw
Mr. Shaw has traded under the name "ELVISLY YOURS"
since the late 1970's. In 1982 he formed a trading company called Elvisly Yours Limited.
Mr. Shaw is the proprietor of the registered trade mark "ELVISLY YOURS" also in
Class 3 for a wide specification of goods, including toiletries, soaps, perfumes,
cosmetics and shampoos. The validity of that registration has not been challenged in these
proceedings. Mr. Shaw has traded in a wide range of products which bear the whole or parts
of Elvis Presley's name or likeness. He has sold his products not only in the United
Kingdom but also abroad. Mr. Shaw asserts, and it is not denied, that Elvisly Yours was
the exclusive supplier of Elvis Presley souvenirs to Graceland in August 1982. It appears
that Enterprises and Mr. Shaw have been in litigation in the USA which effectively
resulted in Mr. Shaw being injuncted from carrying on trade in Elvis Presley memorabilia
in that country.
Although the arguments before me have ranged over a considerable
area, at their heart are two crucial issues; (a) can anyone claim the exclusive right
under the 1938 Act to use the names Elvis and Elvis Presley or the signature as a trade
mark for a range of common retail products and, if so, (b) who?
Before considering what rights might be acquired under the Trade
Marks Act, 1938, it is useful to have a basic concept in mind. As Mr. Prescott put it in
his skeleton argument, Enterprises is a company which has "as its principal object
the exploitation of the name and likeness" of the late Elvis Presley. That it engages
in such exploitation and benefits financially from Elvis Presley's continued fame is not
in dispute. But, ignoring for the moment the effect of any registration of trade marks
which it may secure, it does not own in any meaningful sense the words "Elvis"
or "Elvis Presley". There is nothing akin to a copyright in a name. This has
been part of our common law for a long time. In Du Boulay v. Du Boulay (1869) LR 2
PC 430 the Privy Council said;
"... in this country we do not recognise the absolute right
of a person to a particular name to the extent of entitling him to prevent the assumption
of that name by a stranger. ... the mere assumption of a name, which is the patronymic of
a family, by a Stranger who had never before been called by that name, whatever cause of
annoyance it may be to the family, is a grievance for which our Law affords no
redress."
Even if Elvis Presley was still alive, he would not be entitled
to stop a fan from naming his son, his dog or goldfish, his car or his house
"Elvis" or "Elvis Presley" simply by reason of the fact that it was
the name given to him at birth by his parents. To stop the use of the whole or part of his
name by another he would need to show that as a result of such use, the other person is
invading some legally recognised right. This also is reflected in many cases in the law of
passing off. In a well known and frequently cited passage in Burberrys v. JC Cording
& Co Ltd (1909) 26 RPC 693, Parker J. said;
"On the one hand, apart from the law as to trade marks, no
one can claim monopoly rights in the use of a word or name. On the other hand, no one is
entitled by the use of any word or name, or indeed in any other way, to represent his
goods as being the goods of another to that other's injury. If an injunction be granted
restraining the use of a word or name, it is no doubt granted to protect property, but the
property, to protect which it is granted, is not property in the word or name, but
property in the trade or goodwill which will be injured by its use".
Just as Elvis Presley did not own his name so as to be able to
prevent all and any uses of it by third parties, so Enterprises can have no greater
rights. Similarly, Elvis Presley did not own his appearance. For example, during his life
he could not prevent a fan from having a tattoo put on his chest or a drawing on his car
which looked like the musician simply on the basis that it was his appearance which was
depicted. For the same reason under our law, Enterprises does not own the likeness of
Elvis Presley. No doubt it can prevent the reproduction of the drawings and photographs of
him in which it owns copyright, but it has no right to prevent the reproduction or
exploitation of any of the myriad of photographs, including press photographs, and
drawings in which it does not own the copyright simply by reason of the fact that they
contain or depict a likeness of Elvis Presley. Nor could it complain if a fan commissioned
a sculptor to create a life-size statue of the musician in a characteristic pose and then
erected it in his garden. It can only complain if the reproduction or use of the likeness
results in the infringement of some recognised legal right which it does own.
With that introduction, I can turn to the three applications in
suit. The 1938 Act was repealed by the Trade Marks Act, 1994. However, as a result of the
provisions of Schedule 3 of the latter Act, these applications must be decided under the
regime imposed by the former Act. This does not mean that the 1994 Act is irrelevant. Once
registered the marks will take effect under and the scope of infringement will be
determined in accordance with the 1994 Act, save for a somewhat limited provision relating
to continuing infringement. Under the 1938 Act, the Trade Marks Register was split into
two parts, A and B. To achieve Part A registration the applicant had to show that it met
the requirements of s. 9 of the 1938 Act. Part B registration was achieved by meeting the
requirements of s. 10 of the Act. It was somewhat easier to achieve Part B registration
but the rights given by it under the 1938 Act were less powerful than a Part A
registration. The distinction between Part A and B registrations has now been abolished.
All marks registered under the 1938 Act are treated in the same way under the 1994 Act.
Nevertheless the applications before me were launched under the old regime. The
"ELVIS" and signature marks were pursued for registration in Part A whereas the
"ELVIS PRESLEY" mark was put forward for consideration in Part B. Since somewhat
different considerations apply to each of the applications, it will be convenient to look
at them one by one.
The "ELVIS"
application
As noted above, this is an application for the name "ELVIS" simpliciter.
It is sought to be registered under s. 9 of the Act. This means that Enterprises must
demonstrate that it is a distinctive mark as required by s. 9(1)(e). The meaning of
distinctive is dealt with by s. 9(2) and (3) as follows;
"(2) For the purposes of this section 'distinctive' means
adapted, in relation to the goods in respect of which a trade mark is registered or
proposed to be registered, to distinguish goods with which the proprietor of the trade
mark is or may be connected in the course of trade from goods in the case of which no such
connection subsists, either generally or, where the trade mark is registered or proposed
to be registered subject to limitations, in relation to use within the extent of the
registration.
(3) In determining whether a trade mark is adapted to distinguish
as aforesaid the tribunal may have regard to the extent to which -
(a) the trade mark is inherently adapted to distinguish as
aforesaid; and
(b) by reason of the use of the trade mark or of any other
circumstances, the trade mark is in fact adapted to distinguish as aforesaid."
The distinctiveness addressed by the Act is not a quality of the
mark which exists in a vacuum. It is a particular type of distinctiveness, namely the
ability to distinguish the proprietor's goods from the same or similar goods marketed by
someone else. The more a proposed mark alludes to the character, quality or non-origin
attributes of the goods on which it is used or proposed to be used, the lower its inherent
distinctiveness. At one extreme this means that common laudatory epithets will have
virtually no inherent distinctiveness. They do not inherently serve the function of
distinguishing the proprietor's goods form the same goods marketed by someone else. As Mr.
Prescott pointed out, in Smith Kline & French Laboratories Ltd's Trade Mark
Applications [1976] RPC 511 at 538 Lord Diplock said that the words "inherently
adapted" in s. 9(3) were intended to give statutory effect to the views of Lord
Parker in W & G Du Cros Ltd's Application (1913) 30 RPC 660 that registration
should;
"largely depend on whether other traders are likely, in the
ordinary course of their business and without any improper motive, to desire to use the
same mark, or some mark nearly resembling it, upon or in connection with their own
goods."
Those words have particular impact when it is borne in mind that
the other traders' own goods can be goods having the same character, quality or non-origin
attributes as those of the proprietor.
In the Registry, Mr. Tuck's reasons for rejecting the opposition
to the application to register "ELVIS" for Class 3 goods were expressed as
follows;
"From my own knowledge, I am aware that this was the
Christian or first name of a very famous individual; ... Whilst I can see, therefore, that
the Registrar would take objection to any application for its registration under Section
11 (as deceptive if used without authority) or in his discretion under Section 17(2) (for
the same reason), I cannot see that there is a prima facie objection to it under Section
9. The use of feminine proper names is generally regarded as non-distinctive in Class 3,
but no such objection is taken to masculine proper names used on that class of
goods."
In saying this, it appears that Mr. Tuck was following internal
Trade Mark Registry guidelines or practice. Perhaps such a practice was a useful rule of
thumb in the days when toilet preparations, perfumes, eau de colognes, preparations for
the hair and teeth, soaps, bath and shower preparations, deodorants, anti-perspirants,
cosmetics and the like were thought to be exclusively directed at female customers.
Whatever the position may have been in the past, such products are now frequently sold to
and targeted at men. If there was a Registry approach that prima facie feminine
proper names should not be registered as trade marks for cosmetics and toiletries, it now
should cover masculine proper names also. But in any event, even if there are such
guidelines which are useful in assisting Registry officials to adopt at least a consistent
starting point for the examination of registrations, in the end whether a mark is
acceptable or not for registration must depend upon the particular mark in issue, the
goods for which registration is sought and the nature of the trade into which they will be
sold.
Mr. Meade said that the Registrar came to the wrong conclusion as
to the registrability of the "ELVIS" mark. He said that there was low inherent
distinctiveness. "Elvis" is merely a given name. It may be that in England it is
not the most common name but it is well known, no doubt in large part because of the fame
of Elvis Presley. He says that the fact that the musician's name is well known does not
make the mark more inherently distinctive but less so. He says that Enterprises can not
get over their problems by relying on use or other special circumstances. He says that the
evidence of use is virtually non-existent and there are no other special circumstances.
Mr. Prescott asked me to approach this application in an entirely
different way by considering what the position would be if Elvis Presley was still alive
and had made this application himself. He says that there is no doubt that he would be
entitled to a registered trade mark for his own name. In fact he went further back and
suggested that I consider what the position would have been had these applications been
made not now but before Elvis Presley had burst onto the entertainment firmament. Before
he was famous, the word "Elvis" would have been virtually unknown in England.
Had he applied then he would have got the mark on the register. Mr. Prescott suggested
that the position can be no different if Elvis Presley had applied later once he was
famous or if his estate or its successors apply after he has died.
I reject that seductive argument. What is in issue is whether, at
the date of application, the mark satisfies the registration requirements of the 1938 Act.
It is no help, and may be positively misleading, to consider what the position would have
been in other very different circumstances. The point can be illustrated by reference to TARZAN
Trade Mark [1970] RPC 450. In that case the applicant, Edgar Rice Burroughs Inc. of
Tarzana, California, had been granted certain exclusive rights by the estate of Edgar Rice
Burroughs, the author of the Tarzan stories, "to produce films, records and
merchandise for distribution throughout the world, including the United Kingdom, centred
on the fictional character 'Tarzan'". It applied to register "TARZAN" in
Part A of the Register in respect of films for exhibition and magnetic tape recordings.
The application was unsuccessful in the Registry, in the High Court and in the Court of
Appeal. One of the applicant's arguments was that the mark was an invented word and
therefore prima facie entitled to registration under the provisions of s. 9(1)(c) of the
Act. By November 1965, the date of the application for registration, the word
"Tarzan" had passed into the language and had become a household word. There was
no doubt that originally the word had been invented by Mr. Burroughs. In the Court of
Appeal, Salmon LJ said:
"It is not fatal to the application that the word had been
invented many years before the application was made. For example, if a word was invented,
say, in 1925, and had not passed into the language, it would still remain an invented word
in 1965. The trouble facing Mr. Burrell is that it seems quite plain that the word TARZAN
had by 1965 passed into the language. In Holt's Trade Mark (1896) 13 RPC 118 there
was an application to register the word TRILBY as a trade mark in relation to certain
goods, and the question arose as to whether it was an invented word. Lindley L.J. said at
page 121: "It may have been once an invented word within clause (d)" - section
68 of the Act of 1883 - "but it long ago became too well-known to fall under that
head". Smith L.J. at page 124, said: It is not a word coined for the first time by
the owner of the trade mark, it having been used by Du Maurier in his book in 1893, and it
was, therefore, not an invented work in 1895, when the appellants registered their trade
mark."
For my part, as I have already indicated, it was not necessary to
show that the applicant had invented the word himself in order for it to be an invented
word within the meaning of the statute, but I should have thought that the word TARZAN in
1965, to quote the words of Lindley L.J. "long ago became too well-known" to
fall under the head of an invented word. It certainly, in my judgment, was at least as
well-known in 1965 as the word TRILBY was in 1895, which apparently was only bout two
years after Du Maurier had invented it."
The whole thrust of this passage is that registrability of a mark
must be assessed as of the date of application. No doubt had Edgar Rice Burroughs had the
foresight, or employed a lawyer with the foresight, to realise the merchandising potential
of his Tarzan character at the time he created it and before it was launched before the
public, he could have obtained a registration of that word for films and a wide range of
other products. Whether such a registration could have been removed from the register as a
result of it becoming non-distinctive at a later date is another matter. At the time of
the registration the word would have been an inherently distinctive invented word (and,
incidentally, not descriptive). But that was not what happened in fact. Those interested
in exploiting the Tarzan character waited until it was well known by the public before
they sought the benefits of registered trade mark rights. By that time it was no longer an
invented word (and was descriptive). It follows that whether a mark is registrable under
the 1938 Act has to be decided on the facts and in the market conditions prevailing at the
date of application.
So I approach this appeal on the basis that, at the date of
application, Elvis Presley had been dead for more than 10 years but that his fame
continued to exist on a large scale. There were at the date of application, and still are,
many people in this country who wish to acquire recordings of his songs and films and a
wide variety of domestic articles bearing his likeness and/or his name. It is not in
dispute that there is a large market in Elvis Presley memorabilia. It has kept Mr Shaw in
business for more than 18 years. This judgment does not deal with what Elvis Presley could
have obtained by way of trade mark registration if he had applied for such rights during
his life. In particular it should not be assumed that I accept Mr Prescott's assertion
that there is "no doubt" that Elvis Presley would be entitled to registration of
his own name. That is a proposition which is beset with difficulties but which does not
arise for resolution on this appeal.
It seems to me that Mr Meade was right when he said that the word
ELVIS had very low inherent distinctiveness. Not only is this a well known given name, it
also will be taken by many members of the public to refer back to Elvis Presley. This
accords with the view expressed by Mr Tuck;
"To me, therefore, the name Elvis means Elvis Presley."
The classification of goods for which Enterprises seeks
registration covers a wide range of small value products which can carry the image of
Elvis Presley. In Tarzan Salmon LJ said;
"I asked Mr Burrell during the course of his argument if he
could think of a more direct reference to the character or a film dealing with some
exploits of Tarzan than the description that it was a "Tarzan" film. This was a
question which Mr Burrell, despite his wide experience and ingenuity, was quite unable to
answer. Indeed, it seems plain that such a film could not better be described or referred
to than as a "Tarzan" film."
Then, turning to the question of whether the mark was inherently
adapted to distinguish within the meaning of s.9 of the Act, he referred to the decision
of the House of Lords in Yorkshire Copper Works Limited's Application (1954) 71 RPC
150 and continued;
"In the present case, there is nothing at all in the word
TARZAN which would suggest to the public or to the trade that a film or magnetic tape
recording had anything to do with the applicant or with anyone else. The word TARZAN when
used in connection with a film suggests - and suggests only - that the film has something
to do with the well-known fictional person, Tarzan, a man of great strength and agility
.....
... TARZAN has nothing standing on its own feet, upon which it
would be possible to find that it is inherently apt to distinguish the applicants' films
or magnetic recordings as being the applicants' or anyone else's goods."
Similarly Cross LJ said;
"Turning now to section 9(1)(e), since it is so strongly
descriptive, the word TARZAN can hardly be said to be to any appreciable extent
'inherently adapted to distinguish the applicants' goods from the goods of any other
trader', for, as Lord Simmonds said in the Yorkshire Copper case, "the more
apt a word is to describe the goods of a manufacturer the less apt it is to distinguish
them from the goods of others; for a word that is apt to describe the goods of A is likely
to be apt to describe the similar goods of B."
These passages emphasise that the more a mark has come to
describe the goods to which it is to be applied or to indicate some quality of those
goods, the less it is inherently adapted to carry out the trade mark function of
distinguishing the trade origin of the proprietor's goods from the origin of similar goods
from other sources. This is consistent with Mr. Meade's argument that the more famous
Elvis Presley is, the less inherently distinctive are the words "Elvis" and
"Presley". They are peculiarly suitable for use on the wide range of products
sold as Elvis Presley memorabilia. He therefore does not contest but adopts Enterprises'
assertion that "Elvis is about as famous a name as could be, made famous by the
efforts of Elvis Presley ... Why else do members of the public wish to [purchase] Elvis
merchandise?" Just as members of the public will go to see a Tarzan film because it
is about Tarzan, so they will purchase Elvis merchandise because it carries the name or
likeness of Elvis and not because it comes from a particular source. To adopt the approach
from W & G, there is no reason why Mr. Shaw or anyone else for that matter should not
sell memorabilia and mementoes of Elvis Presley, including products embellished with
pictures of him, and such traders are likely, in the ordinary course of their business and
without any improper motive, to desire to use the name Elvis or Elvis Presley upon or in
connection with their own such goods.
Mr. Prescott argued that this was not the correct approach to
adopt in the late 1990's. He said I should take judicial notice of the fact that markets
have changed since the days of the Tarzan case. There is more public awareness of
character merchandising now. Therefore cases such as Tarzan which were lost in the
1970's would succeed now. He drew my attention to Mirage Studios v. Counter-Feat
Clothing [1991] FSR 145. That was a judgment of Browne-Wilkinson V.C. on an
application for interlocutory relief in a copyright infringement and passing off action.
The plaintiffs exploited on a wide variety of products the name and likeness of a group of
fictitious humanoid cartoon characters called the Teenage Mutant Ninja Turtles. The
defendants made drawings of rather similar looking turtle figures and licensed third
parties to put their drawings on T-shirts. During the course of his judgment, the
Vice-Chancellor said:
"The second point taken by Miss Victoria was that the
plaintiffs had to prove by evidence that the public in purchasing T-shirts or other
clothing carrying Turtle pictures on them would rely on the misrepresentation, namely that
the picture of the Turtles was one licensed by the plaintiffs. That is to say, would the
public decline to buy T-shirts if they knew that what they were buying were the
defendants' counterfeits as opposed to the plaintiffs' genuine Turtles? For that purpose
she relied on Politechnika Ipari Szovetkezet v. Dallas Print Transfers Ltd [1982]
FSR 529. In my judgment, that case does not support the proposition. That case was purely
concerned with establishing that the plaintiff in a passing off case had to show a
reputation which he enjoyed in the goods, which reputation was being interfered with. It
does not, as I see it, come anywhere near requiring affirmative evidence that the public
will rely on the misrepresentation in acquiring the goods. In my judgement, if the
misrepresentation is made there is no requirement of law for further evidence to show that
the misrepresentation was the cause of the public buying the goods in question. In
general, the public expect to buy what they think they are getting, namely the genuine
article. So, here, a teenage child wishing to buy a Mutant Turtle as part of the craze
would wish to get a genuine Turtle, one which was indeed a Teenage Mutant Ninja Turtle. In
the absence of evidence, the court must infer that the object he is buying is not genuine,
he would not buy it but would seek the real object."
As I have said, this was a judgment on an interlocutory
application. It was given ex tempore. It is not clear what evidence was before the
Vice-Chancellor. He appears to have held that the plaintiffs had the necessary reputation
to support a passing off action, the passage quoted above only going to the issue of
whether the plaintiffs needed to prove that the public relied on the misrepresentation
which he had already held that the defendants had made. I do not read it as laying down a
finding of fact of universal application that the products of plaintiffs in similar
circumstances are viewed by the public as "genuine" and that traders in
competing goods are therefore making a misrepresentation. I suspect that the difficulty
arises in knowing precisely what is meant by the word "genuine". However Mr
Prescott suggested that the public's awareness of merchandising practices means that they
will always assume that products of famous personalities or fictitious characters come
from a particular "genuine" source. By "genuine source" I assume that
he meant, in the case of a dead human, either his estate or someone with
"rights" granted by his estate. In the case of fictitious characters perhaps
"genuine" refers to the creator or his successors.
I am quite unable to accept that proposition. It may be that in
some cases a plaintiff in a passing off action or an applicant for a registered trade mark
will be able to show that to be the case. But I am not willing to assume that that is the
public perception generally. On the contrary, my own experience suggests that such an
assumption would be false. When people buy a toy of a well known character because it
depicts that character, I have no reason to believe that they care one way or the other
who made, sold or licensed it. When a fan buys a poster or a cup bearing an image of his
star, he is buying a likeness, not a product from a particular source. Similarly the
purchaser of any one of the myriad of cheap souvenirs of the royal wedding bearing
pictures of Prince Charles and Diana, Princess of Wales, wants mementoes with likenesses.
He is likely to be indifferent as to the source. Of course it is possible that, as a
result of the peculiarities of the way goods are marketed or advertised, an inference of
association with a particular trader may be possible to draw. This may be the case when
the proprietor's products bear the word "Official". But that does not mean that
absent that word members of the public would draw any such inference. That type of
inference appears to have been drawn by the Vice-Chancellor in the Mirage case.
But, as I have already said, there is no reason to assume that it would be drawn in all
cases for all products. In particular there is nothing here which indicates that any
significant section of the public seeing any of Enterprises' products would associate them
with Enterprises by reason of the use of the words "Elvis" or "Elvis
Presley". On the contrary, everything is consistent with those words being used and
recognised as what the relevant public want not because of any trade source they may
indicate but because they are a reminder of the famous musician. As Mr Prescott put it
during his submissions, the motivation for buying Elvis Presley after shave must have
something to do with Elvis Presley. That does not indicate distinctiveness of trade
origin. This is a matter to which I will return below. I note, in passing, that although
Mr Shaw has sold millions of pounds worth of memorabilia bearing the name Elvis or Elvis
Presley over the last 18 or so years, it has not been suggested that anyone has ever
thought they emanated from Enterprises.
It follows that I have come to the conclusion that there is very
little inherent distinctiveness in the mark "ELVIS". However this initial view
may be overcome in accordance with s.9(3)(b) as a result of use of the trade mark by the
proprietor or other circumstances. Enterprises relies on both of these matters to bolster
its application. I shall take them separately.
Evidence of use
During the course of his submissions, Mr Prescott was at pains to
make it clear that he was only here to represent his clients in relation to their
application for Class 3 goods. He said he was not in a position to make any concessions or
submissions in relation to any other products. Insofar as Enterprises is seeking to rely
on use to support their application for registration of this mark, primary importance must
be given to evidence showing use in the United Kingdom of the mark on the goods covered by
the registration and the impact that has had on the public.
Mr Meade says that the evidence of use by Enterprises on Class 3
goods is vanishingly thin. Such evidence as there is, is to be found by Mr Soden's
statutory declaration. He says that Enterprises has since 1982 carried on a substantial
business which "included a wide range of products, including the goods for which
registration is sought". He exhibits two catalogues demonstrating, but not exhaustive
of, the typical product range sold by Enterprises and Elvis Presley himself. He also says;
"... sales in the UK of products under the trademarks
referred to above, including products covered by the opposed Applications, were made in
the 1980's through a retail outlet in Blackpool operated by a Mr Todd Slaughter. The sales
were discontinued when Mr Slaughter went out of business."
Photocopies of what are referred to as "typical products of
the Applicant sold through Mr Slaughter" are also exhibited.
The sales made by Mr Slaughter can be dealt with quite quickly.
No indication is given of how many products were sold nor their value. The exhibited
documents do not suggest, let alone prove, that he ever sold any Class 3 products. The
only Class 3 product, the photocopy for the packaging of which was exhibited to Mr Soden's
declaration, bears a price ticket in US dollars. There is no evidence that it was sold in
the United Kingdom. Mr Prescott did not suggest otherwise. The catalogue exhibits are also
of interest. The first is a document entitled "Elvis Collectibles" and is stated
to be "An identification and Value Guide to hundreds of pieces of memorabilia for the
most promoted celebrity of them all." It has pictures of a large number of products
sold by Enterprises or its licensees but also includes some items which were not produced
by them. The products depicted cover a wide range including an Elvis puzzle from England,
various lapel badges bearing slogans such as "I like Elvis", "Don't blame
me I voted for Elvis" and "Elvis for President", Elvis Presley Lipstick
(with the advertising copy "Keep me always on your lips!"), Elvis Presley
"Teddy Bear" eau de parfum, Elvis Presley pocket watches with the numerals on
the face replaced by the letters of his name, dog tags bearing the words "I'm an
Elvis Fan" and the like. There is nothing to indicate which, if any, of these
products, save for the puzzle, were sold in the United Kingdom. The second catalogue is
dated 1991, two years after the application date for the registrations in suit and appears
to emanate from Enterprises. It also illustrates a wide selection of products of low
inherent value. One of them, under the banner heading "NEW!" is "Elvis
Cologne". There is nothing to suggest that this product was available before 1991 or
that it has ever been sold in the United Kingdom. Other products include T-shirts carrying
a picture of the performer over the word "Elvis", toothpick holders, cups, salt
and pepper shakers and plates all bearing the legend "Elvis Presley / 1935-1977"
and a tie-pin bearing the words "#1 Fan - Elvis". Once again there is nothing to
suggest that any of these have been sold in the United Kingdom.
This evidence is incapable of assisting Enterprises. It does not
show that any products bearing the names "Elvis" or "Elvis Presley"
were sold in the United Kingdom at any time. But more than that, insofar as it shows
anything, it undermines the applicant's case. Not a single use of the names Elvis or Elvis
Presley is in a trade mark sense. They are all uses which accurately refer back to the
performer. When a cup is offered for sale bearing the legend "Elvis Presley /
1935-1977" the use of the musician's name does not perform the function of enabling a
customer to distinguish that cup as a cup emanating from Enterprises from other
memorabilia from other suppliers. It is not an indication of trade origin at all. The fact
that Mr Soden calls such use trademark use, does not mean that it is. No attempt has been
made to show that it was so regarded by any members of the public.
Other circumstances
Mr Prescott argued that there were also here 'other
circumstances' within the meaning of s.9(3)(b) which indicate inherent distinctiveness. He
said that the words "any other circumstances" are perfectly general and
therefore it was possible to take into account what he referred to as collateral
circumstances which had demonstrated the mark to have the necessary distinctiveness or to
have acquired it. He did not suggest that Enterprises' relationship to the estate of Elvis
Presley, whatever that relationship may have been, was such a collateral relationship. To
have done so would have brought him into collision with another part of the Tarzan
decision. Instead he said it was the fame of Elvis Presley, which was the other
circumstance. He said that Mr Shaw's arguments were based on a logical contradiction which
he explained as follows;
"If Elvis Presley had never been born, so that
"Elvis" had no special resonance amongst the British public today, the word
would not count as "the name of an individual" at all within the meaning of
s.9(1)(a). It would be, at best, just a forename, possibly American, not referring to any
particular individual (like "Tex" or "Brad", only rarer). In order to
get this part of their case of the ground, therefore the Appellants need to pray in aid
the fame given by the words Elvis Presley, so that they can say it is the "name of an
individual" within s.9(1)(a). But, in so doing, they themselves introduce the
requisite evidence of "any other circumstances" required by
s.9(1)(e)+9(3)(b)"
I cannot accept this submission. Mr Prescott apparently is
arguing that the fame of Elvis Presley constitutes "another circumstance" which
demonstrates inherent distinctiveness (or capacity to distinguish under s.10). But for
reasons given above, it does nothing of the sort. It does not help to identify the goods
with a particular proprietor, as required by the Act. It only helps to identify the
goods with a particular subject matter, namely Elvis Presley. In other words Elvis
Presley's fame leads away from distinctiveness in the trade mark sense.
For the above reasons I have come to the conclusion that the
"ELVIS" mark is not a distinctive mark within the requirements of s.9 of the
1938 Act. In these circumstances it is not necessary to consider the alternative arguments
advanced on behalf of Mr Shaw under ss.11 and 12 of the Act. However I must confess that
if, contrary to the views expressed above, I had come to the conclusion that
"ELVIS" was a registrable mark, I have difficulty in seeing how Mr Shaw's
extensive use and registration of "ELVISLY YOURS" could fail to give rise to an
objection under those sections.
The "ELVIS
PRESLEY" application
This is applied for under s.10 of the Act in Part B of the
Register. Enterprises accepts that it is less distinctive that the word "Elvis"
alone. However the hurdles to be crossed to achieve registration under s.10 are somewhat
lower than those under s.9. The former provides;
"10(1) In order for a trade mark to be registrable in Part B
of the register it must be capable, in relation to the goods in respect of which it is
registered or proposed to be registered, of distinguishing goods with which the proprietor
of the trade mark is or may be connected in the course of trade from goods in the case of
which no such connection subsists, either generally or, where the trade mark is registered
or proposed to be registered subject to limitations, in relation to use within the extent
of the registration.
(2) In determining whether a trade mark is capable of
distinguishing as aforesaid the tribunal may have regard to the extent to which:-
(a) the trade mark is inherently capable of distinguishing as
aforesaid; and
(b) by reason of the use of the trade mark or of any other
circumstances, the trade mark is in fact capable of distinguishing as aforesaid".
It will been seen that the requirement of "adapted to
distinguish" in s.9 is replaced by "capable of distinguishing". The
obscurity introduced into our law by this difference is set out with clarity in Kerly's
Law of Trade Marks and Trade Names (12th Edition) at paragraphs 8-74 to 8-76. Little
point would be served by repeating what is said there. The essence of Part B registrations
was that they allowed onto the register new unused marks and little used marks which were
near the borderline of registrability under s.9. However it was still necessary to show
that the mark had the ability to distinguish in a trade mark sense. That is to say, to
perform the function of distinguishing the proprietor's goods from similar goods from
another trader. All the factors which have led me to the conclusion that "ELVIS"
is incapable of distinguishing in that sense apply equally strongly to "ELVIS
PRESLEY". Neither of those marks qualifies for registration under s.10 either.
The signature mark
This is applied for under s.9. The mark is as follows;
Against this, Mr Shaw has raised a number of objections. He says
that Enterprises has not discharged the onus on it to show that the mark is a signature of
Elvis Presley, has not shown that it is distinctive and that there are ss.11 and 12
objections to it based on his own use and registration of his "Elvisly Yours"
trade mark. In the alternative, he argues that registration of the mark should be subject
to suitable wide disclaimers under s.14 of the Act.
Signatures are dealt with expressly under the 1938 Act. To
understand this it is useful to have in mind some of the provisions of s9(1);
"9(1) In order for a trade mark (other than a certification
trade mark) to be registrable in Part A of the register, it must contain or consist of at
least one of the following essential particulars:-
(a) the name of a company, individual, or firm, represented in a
special or particular manner;
(b) the signature of the applicant for registration or some
predecessor in his business;
(c) ....;
(d) word or words having no direct reference to the character or
quality of the goods, and not being according to its ordinary signification a geographical
name or a surname;
(e) any other distinctive mark, but a name, signature, or word or
words, other than such as fall within the descriptions in the foregoing paragraphs (a),
(b), (c) and (d), shall not be registrable under the provisions of this paragraph except
upon evidence of its distinctiveness."
The initial words "any other distinctive mark" in
s.9(1)(e) have been taken to confirm that all marks which pass muster for entry in Part A
of the register must be distinctive [see Fanfold Ltd's Application (1928) 45 RPC
325]. S.9(1)(a), (b) and (d) also indicate that names, and
particularly surnames, which are not rendered in a special or particular manner or in the
form of a signature are, prima facie, not distinctive whereas those that are so
rendered are, prima facie, distinctive.
Although the Registry and the court must start from the premise
that signatures are prima facie distinctive, they are not inevitably so. A person
may adopt any manuscript rendering of the whole or a part of his name as a signature. It
is well known, and confirmed by consulting any sizeable telephone directory, that many
people have surnames which are prima facie descriptive or non-distinctive if used
for trade mark purposes. There are many adjectival surnames such as Good, Best, Perfect,
Brilliant, Most, Round, Sharp and Blunt, numerous surnames such as Gold, Silver, Bacon,
Shine, Sheen, Bottom, Tough to say nothing of those names derived from well known
locations like London, Glasgow, York, Hampshire, England, Scotland, Ireland and French.
Someone with one of these names may adopt a signature which consists of his surname spelt
out in precise capitals or in a perfect script which is indistinguishable from, say, Times
Roman font. Such writings, though signatures, would be indistinguishable from the printed
form of the name and, it seems to me, would not be distinctive. What makes most signatures
distinctive is that they consist of a substantially unique and frequently highly distorted
way of writing the author;s name. They are in a sense a private graphic tied to one
person. If Elvis Presley had signed his name in block capitals that signature would not be
any more registrable than the "ELVIS PRESLEY" mark dealt with above. To allow
registration of such a mark, simply on the basis that it was how the author signed his
name, would be to give the proprietor trade mark rights which could be enforced against
other traders using block capitals or any other legible script. But that is just the sort
of use which, according to W&G should not be the subject of monopoly rights. To
allow such a signature to be registered would be to forget that the mark, whether falling
within s.9(1)(b) or not, still has to be distinctive.
If the signature mark in issue here is registrable, its
distinctiveness must be dependent on the particular graphic style used to write it.
However, particularly having regard to the wide infringement provisions of the 1994 Act,
an unqualified registration of the mark might well give rise to protection far beyond the
graphic style used. In effect it could well give rise to protection for the words
"Elvis", "Presley", "Elvis A Presley" or "Elvis
Presley" but all of those, absent the special graphic style are, for reasons already
given, not distinctive. It is for this reason that Mr Shaw says that any registration
should be subject to a disclaimer under s.14 of the Act. That provides;
"14. If a trade mark
(a) .....
(b) contains matter common to the trade or otherwise of a
non-distinctive character;
the Registrar or the Board of Trade or the Court, in deciding
whether the trade mark shall be entered or shall remain on the register, may require, as a
condition of its being on the register,
(i) that the proprietor shall disclaim any right to the exclusive
use of any part of the trade mark, or to the exclusive use of all or any portion of any
such matter as aforesaid, to the exclusive use of which the tribunal holds him not to be
entitled; or
(ii) that the proprietor shall make such other disclaimer as the
tribunal may consider necessary for the purpose of defining his rights under the
registration:
Provided that no disclaimer on the register shall affect any
rights of the proprietor of a trade mark except such as arise out of the registration of
the trade mark in respect of which the disclaimer is made."
It seems to me that, at the very least, the signature mark
contains matter common to the trade or otherwise of a non-distinctive character, namely
the individual words that go to make up Elvis Presley's name. As a result it seems to me
that if this mark is to be registered it must be subject to a disclaimer. I did not
understand Mr Prescott to dissent from that in principle. If registered, I would subject
this mark to a disclaimer in the following terms;
"Nothing in this registration shall give rise to any
exclusive rights in the words "Elvis", "A" and "Presley"
whether used separately or together save when used in substantially the script
shown."
It would be easy to say that with such a disclaimer the signature
mark would not be a significant impediment to others engaged in the trade of selling Elvis
Presley memorabilia and should therefore be allowed on the register. For some time I
thought that this was the course that I should adopt. However in the end the onus is still
on Enterprises to demonstrate that the signature mark, even with the disclaimer, is
adapted to distinguish its goods from the same or similar goods of other traders.
The signature mark is not a highly stylised writing of Elvis
Presley's name. In fact its most notable features are the words of the name itself. There
is nothing graphically or visually distinctive about the style in which the words are
written. It is jut a simple, if not very fluent, cursive rendition of the name. On the
face of it, the signature does not appear to me to be adapted to distinguish.
Nevertheless, in accordance with the provisions of s.9(3)(b), in determining whether the
mark is adapted to distinguish the court is "entitled to have regard to the extent to
which by reason of the use of the trade mark or of any other circumstances" the mark
is in fact adapted to distinguish the proprietor's goods. As noted above, Mr Prescott
argued that the words "other circumstances" is of the widest generality. I
agree. It is open to the court to look at all factors which point towards and away from
distinctiveness. As was the case with the other two marks, there is no evidence that
Enterprises used the signature, whether as a trade mark or otherwise, on any Class 3 goods
in the United Kingdom and there is no evidence that any member of the public here has
learned to treat it as a mark distinguishing goods as coming from a particular source. It
therefore seems to me that none of the trading history helps Enterprises. On the contrary,
such evidence as does exist showing the way that Elvis Presley memorabilia is marketed
world-wide points away from distinctiveness. The catalogues exhibited to Mr. Soden's
statutory declaration show that there have been many instances where the names
"Elvis" and "Elvis Presley" have been used in order or less cursive
fonts on products but in a way which gives no suggestion that they are signatures. I have
in mind particularly the following to be found in Bundle C;
Page 10 - Elvis Presley Belt Buckle
Page 11 - Elvis Presley "Love me tender" Necklace
Page 26 - Elvis Presley Jeans - Elvis Presley
Page 62 - Elvis small colour booklet
Page 65 - The Elvis Presley Story
Page 87 - Elvis Presley 1935 - 1977 (toothpick holder, cup shakers)
Page 90 - #1 Fan Elvis, Elvis Presley 1935 - 1977 (cup, plate, ceramic bell)
This is reinforced by the way in which Mr. Shaw has used his own
mark and the name "Elvis Presley". His mark, which appears on many of his
products, his headed notepaper and as the masthead of the fan magazine he produces, is;
and over the last eighteen years he has sold a variety of
products bearing the name "Elvis Presley" depicted in the following way;
I have come to the conclusion that other traders are likely, in
the ordinary course of their business and without any improper motive, to desire to use
the name "Elvis" or "Elvis Presley" in a cursive script which is the
same as or nearly resembles the script in the signature mark upon or in connection with
their own goods. The mark is not adapted to distinguish in the sense used in the 1938 Act.
In addition to this, I have come to the conclusion that Mr.
Shaw's objections to the signature mark on the basis of ss.11 and 12 are also made out.
S.11 provides;
"It shall not be lawful to register as a trade mark or part
of a trade mark any matter the use of which would, by reason of its being likely to
deceive or cause confusion or otherwise, be disentitled to protection in a court of
justice, or would be contrary to law or morality, or any scandalous design".
and 5.12 provides;
"(1) Subject to the provisions of subsection (2) of this
section, no trade mark shall be registered in respect of any goods or description of goods
that is identical with or nearly resembles a mark belonging to a different proprietor and
already on the register in respect of:-
(a) the same goods,
(b) the same description of goods, or
(c) services or a description of services which are associated
with those goods or goods of that description."
Both parties agreed that the test to be applied in deciding
whether the s. 11 objection is made out is that prescribed by Parker J. in Pianotist
Co's Application (1960) 23 RPC 774;
"You must take the two words. You must judge of them both by
their look and by their sound. You must consider the goods to which they are applied. You
must consider the nature and kind of customer who would be likely to buy those goods. In
fact, you must consider all the surrounding circumstances; and you must further consider
what is likely to happen if each of these trade marks is used in a normal way as a trade
mark for the goods of the respective owners of the marks. If considering all those
circumstances, you come to the conclusion that there will be a confusion - that is to say
- not necessarily that one will be injured and the other will gain illicit benefit, but
that there will be a confusion in the mind of the public, which will lead to confusion in
the goods - then you may refuse registration, or rather you must refuse the registration
in that case".
Mr Prescott also drew my attention to the test adopted by
Evershed J in Smith Hayden's Application (1946) 63 RPC 97. He dealt with both s.11
and 12;
"(a) (under Sec.11) "Having regard to the reputation
acquired by [the superior mark], is the Court satisfied that the [junior mark], if used in
a normal and fair manner in connection with any goods covered by the registration
proposed, will not be reasonably likely to cause deception and confusion amongst a
substantial number of persons". (b) (under Sec. 12) "Assuming use by [the
opponents] of their marks .... in a normal and fair manner for any of the goods covered by
the registrations of those marks ....... is the Court satisfied that there will be no
reasonable likelihood of deception or confusion among a substantial number of persons if
[the applicants] also use their [junior] mark normally and fairly in respect of any goods
covered by their proposed registration?""
Those passages make it clear that unless the applicant, i.e.
Enterprises, satisfies the Court that there is no reasonable likelihood of deception or
confusion among a substantial number of persons, registration must be refused. So far as
possible the register is to be kept clean of marks which run the risk of causing confusion
or deception. I have already mentioned that Mr. Tuck in the registry came to the
conclusion that Mr. Shaw's mark both as registered and used was a strong mark involving a
degree of invention. Mr. Prescott did not challenge that assessment. If, contrary to my
views, Enterprises' signature mark was adapted to distinguish in the trade mark sense,
then the similarity between it and Mr. Shaw's mark would be likely to give rise to
deception and confusion.
In the light of these findings it is not necessary for me to
consider Mr. Shaw's additional point that there is no relevant evidence that the writing
in the signature mark is in fact the signature of Elvis Presley.
I will allow the appeal in relation to all three applications.
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