Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours, Court of Appeal - Civil Division, March 12, 1999, [1999] RPC 567,[1999] EWCA Civ 964

Reporting Judge: [1999] RPC 567,[1999] EWCA Civ 964

President: Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours

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Extract

Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours, Court of Appeal - Civil Division, March 12, 1999, [1999] RPC 567,[1999] EWCA Civ 964

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Draft Elvis10.Doc 15 March 1999 10:02

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Draft Elvis10.Doc 15 March 1999 10:02

Case No: CHANF 1997/0686/3 E No 1337

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM CHANCERY DIVISION

THE HON. MR JUSTICE LADDIE

Royal Courts of Justice

Strand, London, WC2A 2LL

Date: Friday 12th March 1999

B e f o r e :

LORD JUSTICE SIMON BROWN

LORD JUSTICE MORRITT

and

LORD JUSTICE ROBERT WALKER

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Computer Aided Transcript of the Stenograph Notes of

Smith Bernal Reporting Limited

180 Fleet Street, London EC4A 2HD

(Official Shorthand Writers to the Court)

Mr P.Prescott QC (instructed by Eversheds for the Appellant)

Mr R.Meade (instructed by Cameron McKenna & Co for the Respondents)

(As Approved by the Court)

Crown Copyright

Lord Justice Robert Walker

The litigation

This is an appeal from an order of Laddie J made on 18 March 1997 in a trade mark case. On 26 January 1989 Elvis Presley Enterprises Inc (Enterprises) of Memphis, Tennessee made three applications to register trade marks under the Trade Marks Act 1938 (the 1938 Act). The numbers of the applications and the marks applied for were as follows :

1371624 signature `Elvis A.Presley'

1371627 ELVIS

1371637 ELVIS PRESLEY

The first of these has been referred to as the signature mark. All three applications were for the same specification of goods, that is

"Toilet preparations, perfumes, eau de cologne; preparations for the hair and teeth; soaps, bath and shower preparations; deodorants, antiperspirants and cosmetics; all included in Class 3."

The applications survived their initial examination in the Patent Office and were advertised in the official journal on different dates between March and May 1991. On 27 December 1991 notices of opposition to all three applications were put in by Mr Sid Shaw, who trades as `Elvisly Yours' and is registered proprietor of that trade mark for a wide range of goods in Class 3. The notices stated six grounds of opposition, including lack of distinctiveness and conflict with Mr Shaw's own mark.

Mr Shaw's opposition led to a hearing before the Registrar, in the person of Mr M.J.Tuck as hearing officer. In a written decision dated 31 January 1996 Mr Tuck found that the grounds of opposition were not made out, and did not think it appropriate to exercise the Registrar's discretion to refuse registration. Mr Shaw appealed to the High Court, where Laddie J allowed his appeal, and Enterprises in turn appeals to this court.

The legislation

Before entering into the Judge's reasoning and the grounds of appeal it is necessary to identify the relevant statutory provisions. Any application to register a trade mark made since 31 October 1994 is determined under the Trade Marks Act 1994 (the 1994 Act). It is not a consolidating Act but was enacted to give effect to the Trade Marks Directive of the Council of what was then the European Economic Community (1989/104/ EEC). The 1994 Act must be construed in accordance with its community origins and aims and it is clear that it has made some important changes in the old law.

The 1938 Act has in principle been repealed, but that is subject to the very important exception that under the transitional provisions in Schedule 3 to the 1994 Act, the 1938 Act continues to apply to pending applications for registration. So Enterprises' applications have to be determined under the 1938 Act but if they result in registration the marks will then be subject to the provisions of the 1994 Act. One consequence of that is that as the new register has no division into Part A and Part B, the different tests laid down in the 1938 Act for registration in Part A and Part B respectively no longer have any useful purpose. For this diminishing class of pre-1994 Act applications there are in effect two different entrance examinations for admission to the same institution. Before the 1994 Act the statutory law as to registration of trade marks had developed slowly but steadily since 1875, with the Trade Marks Act .91905 (the 1905 Act), as amended, being consolidated by the 1938 Act.

Section 68(1) of the 1968 Act contains some definitions which provide the best starting-point:

"mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof

"trade mark" means [with an irrelevant exception] a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right ei...

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