Is your use of a celebrity’s name in a proposed trade mark confusing?

Proposed trade marks often refer to celebrities or well known products.

In Elvis Presley Enterprises Inc v Elvis Jelcic [2008] ATMO 103 the estate of Elvis Presley was unsuccessful in its opposition to registration of “ElvisFINANCE” as a trade mark under Section 43 of the Trade Marks Act.

 The opponent contended 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. It argued that the presence of the word “Elvis” in the trade mark would be likely to confuse or deceive.

There was no evidence Elvis Presley was involved in financial services. “Elvis” was the given name of the applicant.

It is established law that merely invoking a reference to a deceased celebrity cannot deceive or confuse.

In this case, the use only of the name “Elvis” next to the word “FINANCE” was not enough to cause a likelihood of deception or confusion. If the applicant had embellished the mark with anything that would suggest Mr Presley, such as guitars, the word “King”, white jump suits, or similar, then the result may have been different.

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