Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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The curious afterlife of old bands, some of whom survive their original membership, is a little publicised niche of the IP world. Legal disputes about who owns the rights to the names of some of the world's most lauded rock bands are not uncommon. The oddest is probably Blood Sweat and Tears, which shows up with scattered members from the past but also "with Chuck Negron" who acquired rights to the group but had nothing to do with it originally. Instead he was with Three Dog Night, which tours without him. 

Last year, the five members of the Angels who shot to fame in Australia in the late 1970's re-united after one such dispute. Part of the Australian citizenship test is to recite the rejoinder to the Angels' hit "Am I Ever Gonna See Your Face Again?" In another barney that ended up in court, the founding members of Australia's 'Little River Band' are unable to trade under that name because they sold it to a guitarist in the 80’s who ended up with all the shares in the company that owned the rights to the name. When they tried to tour as the ‘Original Little River Band’ a couple of years ago, he sued them and won. Now they trade as 'Birtles, Shorrock, Goble of the original Little River Band'. To someone who did not like their sound in the first place, now they sound like a law firm.

In a recent dispute over the name HERMAN'S HERMITS, Frimp Ltd v Jan Barry Whitwam [2009] ATMO 5 (19 January 2009) Jan Whitwam (the Applicant), who was not in the original 1963 line-up but was from 1964 a drummer in the famous 60's British act, applied in Australia to register the trade mark HERMAN'S HERMITS  in class 16 for "Printed matter, posters, photographs, stickers" and in class 41 for "Entertainment services; live performances by a musical group including performances of recorded music by a musical group." The applicant also owns the trade mark in the United Kingdom in class 41 and for the European Community in classes 16 and 41.

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In the recently published decision Elvis Presley Enterprises Inc v Elvis Jelcic [2008] ATMO 103, a Delegate of the Australian Trade Marks Office has allowed the trade mark ‘ElvisFINANCE’ covering financial services in Class 36 to proceed to registration despite opposition from Elvis Presley Enterprises.

Jelcic established his mortgage brokerage, ElvisFINANCE, in 2004 and claims to have spent substantial costs since that time setting up the business.  On the other hand, as far as we are aware, Elvis Presley Enterprises has never offered home loans or any type of financial services, although The King was known among his entourage for automotive finance.

The main ground of opposition sought to be established by the Opponent was under section 43 of the Trade Marks Act 1995 which requires that because of some “connotation ...the trade mark…has,…or would be likely to deceive or cause confusion”.  The main gist of the Opponent’s argument was that commercial use of such a famous person as Elvis Presley would be regarded as an endorsement and would deceive or cause confusion on this basis. The Delegate accepted that use of the word ‘Elvis’ may cause come people to think of the singer.