Return to sender: ELVISFINANCE opposition dismissed

Australia
In Jelcic v Elvis Presley Enterprises Inc ([2008] ATMO 103, December 24 2008), a hearing officer at the Australian Trademarks Office has considered whether a reference to a deceased celebrity was likely to deceive or confuse.

The dispute involved an objection by Elvis Presley Enterprises (EPE) to the registration of the mark ELVISFINANCE by mortgage broker Elvis Jelcic.

EPE objected to the registration under Sections 42, 43 and 60 of the Trademarks Act 1995. EPE relied principally on Section 43, submitting that the application should be rejected because the use of the word 'Elvis' in the trademark ELVISFINANCE would be likely to deceive or confuse consumers.

EPE submitted that Elvis Presley’s identity was such that the name Elvis was exclusively associated with him. Further, it contended that a reference to 'Elvis' would inevitably give rise to the connotation that Jelcic’s financial services had the endorsement of Elvis Presley.

The hearing officer considered the decision in Executors of the Estate of Diana, Princess of Wales (Deceased) v Masterson ([2001] 52 IPR 264), in which the executors sought to oppose the registration of the trademark DIANA'S LEGACY IN ROSES. The opposition was refused and it was held that "merely invoking the memory of a deceased celebrity does not, in itself, confuse".

However, EPE relied on the successful appeal by the executors in McCorquodale v Masterson ([2004] FCA 1247) 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". EPE claimed that this could be applied with particular relevance to Elvis Presley, who, unlike the late Princess, had been associated with a broad range of commercial endorsements.

In his defence, Jelcic submitted that the mark ELVISFINANCE did not necessarily convey a clear reference to Elvis Presley. In particular, Jelcic contended that:
  • the inclusion of the word 'finance' in the mark conveyed the nature of his business; and
  • there was no evidence of a link ever having been established between Elvis Presley and the provision of financial services.
Jelcic sought to distinguish its case from McCorquodale, in which the court had found that a reference to 'Diana' or 'roses' implied a connection with the late Princess.

In the present case, the hearing officer accepted that while the name Elvis had "ancient heritage", its use generally evoked Elvis Presley. However, relying on McCorquodale, the hearing officer stated that "the question is whether, because of the connotation, the proposed mark is likely to deceive or cause confusion".

The hearing officer rejected the arguments advanced by EPE, ruling that the connotation was insufficient to cause a likelihood of deception or confusion. The hearing officer noted that if Jelcic were to "embellish the mark with anything that would suggest Mr Presley, such as guitars, the word 'King', white jumpsuits or suchlike, then EPE might have remedies in another jurisdiction".

For the reasons stated in relation to the Section 43 grounds, the hearing officer dismissed the opposition under Section 42. Similarly, the hearing officer found that no ground of opposition had been established under Section 60, determining that there was "no real tangible danger of deception or confusion occurring despite the similarity between the application and the cited trademarks". The trademark application was thus allowed to proceed to registration in accordance with Section 55 of the act.

Jim Dwyer, Allens Arthur Robinson, Sydney, with the assistance of Anna Payten, summer clerk 

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