## Facts

- Elvis Presley Enterprises, Inc. (EPE) controlled commercial exploitation of Elvis Presley’s name, image, and related intellectual property.
- Sid David Shaw traded in Elvis-related merchandise in the United Kingdom and owned a registered UK trade mark, **ELVISLY YOURS**, for Class 3 goods (toiletries, perfumes, cosmetics) marketed as relating to the late Elvis Presley.
- In 1989, EPE applied under the Trade Marks Act 1938 to register three Class 3 marks: **ELVIS**, **ELVIS PRESLEY**, and a signature mark reading **“Elvis A. Presley.”**
- Shaw opposed all applications, relying principally on (i) lack of distinctiveness and (ii) conflict and likely confusion with his earlier **ELVISLY YOURS** registration for overlapping goods.
- A hearing officer for the Registrar rejected the opposition and allowed the applications; Shaw appealed.
- The High Court (Laddie J) allowed Shaw’s appeal and refused registration, holding the marks were not registrable, primarily for lack of distinctive character.
- EPE appealed to the Court of Appeal.

## Issues

1. Whether **ELVIS**, **ELVIS PRESLEY**, and the **“Elvis A. Presley”** signature mark had sufficient inherent distinctiveness for Class 3 goods under the Trade Marks Act 1938.
2. Whether registration should be refused due to likely deception or confusion, including conflict with Shaw’s earlier **ELVISLY YOURS** mark for similar Class 3 goods.
3. Whether uncertainty about the authenticity of the signature mark affected registrability.
4. Whether a deceased celebrity’s fame and character-merchandising practice can, without more, convert the celebrity’s name or signature into a registrable trade mark.

## Decision

- The Court of Appeal dismissed EPE’s appeal and upheld refusal of registration.
- The court held that the marks lacked sufficient inherent distinctiveness for the claimed Class 3 goods.
- The court rejected the proposition that celebrity fame or character merchandising, by itself, creates registrable trade mark distinctiveness or an exclusive right to control use of the name.
- The court treated confusion and conflict concerns arising from Shaw’s earlier **ELVISLY YOURS** registration as reinforcing refusal.
- Doubts about the signature’s authenticity did not assist EPE; even assuming genuineness, the signature was not shown to function as a trade mark for the goods.

## Legal Principles

- Trade mark registration protects signs that function as **indications of trade origin** for specified goods or services; it does not create a general proprietary right to exploit a famous name.
- A famous personal name may be evocative or referential (theme/subject matter) yet still fail the statutory requirement of distinctiveness unless it is shown to distinguish one trader’s goods from others.
- Character merchandising is a commercial practice, not an independent source of legal rights; statutory trade mark requirements, including distinctiveness, remain controlling.
- A celebrity’s autograph or signature, even if genuine, is not inherently distinctive for goods merely because it is associated with the celebrity; it must be capable of operating as a badge of origin.
- Where an earlier registered mark covers overlapping goods and closely related “Elvis-themed” branding, the risk of confusion supports refusal of later applications.

## Conclusion

The Court of Appeal refused registration of EPE’s ELVIS-related marks for toiletries and cosmetics because they were not inherently distinctive and could not be made registrable by Elvis Presley’s fame or merchandising practice; the existing ELVISLY YOURS registration and overlapping goods further supported refusal due to likely confusion.


Elvis Presley Enters., Inc. v. Sid Shaw (trading as Elvisly Yours), [1999] R.P.C. 567 (Eng. C.A. 1999)