Back in October 2016, representatives for the estate of the late Elvis Presley wrote to BrewDog, claiming that the retail of its ELVIS JUICE infringed Presley’s trade marks. The estate owns trade mark registrations for the word ELVIS in relation to a variety of goods and services. BrewDog filed UK trade mark applications for ELVIS JUICE in November 2015 and BREWDOG ELVIS JUICE in March 2016. These were opposed by the estate of Elvis Presley and a Cease and Desist letter was sent, presumably with the intention of preventing dilution of the ELVIS brand. It claimed that BrewDog is taking unfair advantage of, or causing detriment to, the ELVIS brand. The status of the consolidated actions on the UKIPO say “Decision/Suspended” — so we envisage an update to be released soon.
In a humorous twist, the founders of BrewDog, James Watt and Martin Dickie, both changed their names by deed poll on 4 October 2016 to ‘Elvis’...
Whilst there is an ‘own-name’ defence under English trade mark law, which was used successfully in the ASSOS v ASOS case, it’s unlikely that this defence will have been used, or will be successful in this instance, as the own name defence must be in accordance with honest practice. Watt and Dickie only changed their names in response to a letter from Elvis’s estate. It was most likely done to rile the opponent and encourage media interest in the matter. We shall wait and see what they argued.
The big, bad lawyers
In March 2017, BrewDog had a bit of a PR disaster. Joshua and Sallie McFadyen opened their independent pub LONE WOLF in Birmingham in January 2017. A week after opening, they received a Cease and Desist letter from the lawyers for BrewDog, claiming trade mark infringement and passing off, of BrewDog’s trade marks LONE WOLF (for beers and spirits) and LONE WOLF & Device (for beer, spirits, distillery services, restaurant and bar services). They demanded that the brother and sister company rebrand their pub and change their company name, which was registered at Companies House a year before BrewDog incorporated their spirits company and applied to protect the device for bars.
As a start-up business, receiving such demands and having no money for lawyers, Lone Wolf was forced to rebrand to The Wolf, paying out for new signage and get up, and changing their marketing and social media profiles. Then in March, a month after rebranding, BrewDog said that “we’re more than happy for the Lone Wolf bar to use the name”, blaming their “trigger-happy” lawyers for starting the legal action. BrewDog tweeted “lawyers can sometimes go a bit crazy and forget the kind of business we are and how we behave. They are sorry for their actions” and “we’ve set the lawyers straight and asked them to sit on the naughty step to think about what they’ve done”. As any legal representatives will know, this is probably not quite the full picture, but we’ll ignore BrewDog’s passing of the buck. The McFadyens have stated that they have no interest in rebranding (again) and have declined the offer of crates of LONE WOLF gin and vodka from BrewDog.
BrewDog’s flagship product — the fruity, golden and frankly, quite tasty Punk IPA — has been in the centre of BrewDog’s most recent trade marks dispute. Or rather, the name PUNK has. It has been reported that Stuart Forsyth and Tony Green, who are well known on the Leeds music scene, applied to register DRAFT PUNK, as a play on words referencing the dance act Daft Punk, in October 2016 in Class 43 for “services for providing food and drink”. Leeds independent record label, Released Records, which is managed by Tony Green, states that it had plans to open a new bar in Leeds under the name Draft Punk, a claim that BrewDog refutes as “opportunistic lies combined with inaccurate journalism”.
BrewDog’s lawyers filed a Notice of Threatened Opposition against the application in December and sent the applicants a Cease and Desist letter requesting that they withdraw the application on the basis of BrewDog’s registration for PUNK in Class 32 for “beer, lager”. The letter stated that “the provision of food and drink services under the mark DRAFT PUNK would give rise to a likelihood of confusion in the marketplace, including a likelihood of association with our client’s earlier mark PUNK”. Having already invested in PR and design services, the applicants could not afford to defend their application, and they withdrew it in January 2017.
In the last month, BrewDog has received a £213million investment from a US private equity firm and is now valued at approximately £1billion. BrewDog has always claimed to be a critic of large firms that appear to throw their weight around or act like “just another multinational corporate machine”. In fact, in response to the ELVIS infringement claim, its blog stated, “Here at BrewDog, we don’t take too kindly to petty pen pushers attempting to make a fast buck by discrediting our good name under the guise of copyright infringement”. However, its recent reactions to trade mark issues seem to have left a bitter taste for start-ups and independents, which have accused it of being exactly like those “corporate machines”. This has not helped BrewDog’s PR.
Protecting, valuing and enforcing your IP is vital if the brand or product names are assets to your business. It’s a shame that the start-ups in the above matters could not afford legal advice, as the outcomes could have been quite different. However, it would seem that an equally important lesson to learn is the style in how you approach third parties and enforce your rights. This can be even more damaging to your image than another party inadvertently using your trade mark.