The Elvis Presley Estate, through its merchandising company, Elvis Presley Enterprises Inc., has failed to achieve registration of the marks ELVIS, ELVIS PRESLEY and the ELVIS Signature in respect of Class 3 goods under the old 1938 Trade Marks Act following a successful appeal to the High Court by Sid Shaw, the owner of an Elvis memorabilia shop and the owner of the trademark ELVISLY YOURS, against the refusal of his opposition. The appeal succeeded not because of any similarity or likelihood of confusion between the applications and the earlier registration, but rather because Mr. Justice Laddie concluded that, in view of the fame of Elvis Presley, the marks lacked distinctiveness and would serve to act as a reminder of the deceased performer and not as an indication of any specific trade source.

The principle to be drawn from this case, namely, that marks, featuring the names and particularly the signatures of dead celebrities, lack distinctiveness, is likely to cause concern in the field of character merchandising. However, it should be remembered that the case was applying the provisions of the previous 1938 Trade Marks Act, which was stricter regarding the registration of names generally than the current 1994 Act. It remains to be seen whether the reasoning in this case will be applied to cases brought under the new 1994 Law.