“[T]he outcome of this case might have a disruptive effect on any possible sector/industry involving names of famous persons, from art and literature to sports, history, science, fashion and so on.” – INTA amicus brief
The International Trademark Association (INTA) last week filed amicus briefs before the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal in three cases concerning applications to register EU trademarks (EUTMs) for the words GEORGE ORWELL, ANIMAL FARM and 1984.
All of the applications were filed in 2018 by The Estate of the Late Sonia Bronwell Orwell (George Orwell’s second wife, who survived him and died in 1980) without evidence of acquired distinctiveness through use.
The GEORGE ORWELL Case
The GEORGE ORWELL application was refused for books, films or entertainment, cultural or educational services in classes 9, 16 and 41 but allowed for the other goods and services applied for.
The examiner said the name “will not convey a distinctive trademark significance for the relevant consumer of the rejected goods and services but will rather be seen as a descriptive indication of subject matter: by or about George Orwell.” The applicant appealed the rejection, and last year the appeal was sent to the Grand Board.
In its brief, INTA states that names, including famous person’s names, are not per se excluded from trademark protection, including for books, films etc., and that names of authors may serve as an indicator of the origin of the relevant goods/services: “It is therefore for the judicator bodies to assess, on a case-by-case basis, whether a specific famous name would be perceived as a distinctive sign in connection with the concerned goods/services, by applying the standard threshold, applicable to all the other signs.”
The Association argues that the right to protect a name, and in particular a famous name, should be safeguarded: “[T]he outcome of this case might have a disruptive effect on any possible sector/industry involving names of famous persons, from art and literature to sports, history, science, fashion and so on.”
ANIMAL FARM and 1984 Cases
The ANIMAL FARM and 1984 applications were refused for all the goods and services applied for on the grounds that, as the titles of artistic works, they would not be perceived by the public as marks indicating the origin of the relevant goods and services. The applicant appealed.
The Fifth Board of Appeal requested that the Grand Board establish “whether the title of a famous and well-known book – as such – will merely be perceived as an indicator of the content or subject matter of books, films or entertainment services … thus being descriptive and devoid of distinctive character … or to the contrary there must be present additional factors in order to reach the aforesaid conclusion.”
INTA states that signs consisting of titles of literary and artistic works, including famous ones, are not per se excluded from trademark protection. Establishing whether a sign falls within any of the absolute grounds of refusal “is a complex assessment which must be carried out by considering various factors and all the circumstances of the case, taking into account that the perception of the public may vary over time.”
It argues that signs corresponding to titles of famous works should not be subject to special treatment, and moreover the adoption of a priori rules on distinctive character should be discouraged. It also recommends that the Grand Board clarify “that titles of artistic works are not among those signs for which, according to the established case-law, it is deemed more difficult to establish distinctive character (such as slogans, shape of goods and colors).”
INTA also emphasizes that granting trademark protection would not stop third parties from using the marks in a descriptive, non-trademark, manner.
Cases before the Grand Board are relatively rare. There are about 15 pending, including these three. The Grand Board comprises nine members, including the President of the Boards of Appeal and the Chairperson of each Board, and hears cases that are difficult or where there are diverging decisions.
Decisions of the Grand Board, like those of other Boards of Appeal, can be appealed to the EU General Court and further (with permission, and only on issues of law) to the EU Court of Justice.
INTA’s briefs were drafted independently of the parties in the cases at issue.
A further EUTM application comprising George Orwell’s signature was filed by the Estate on March 1 2021.
There are two other EUTMs registered for 1984, one word mark for goods in class 30 and one figurative mark for goods and services in classes 9, 35, 38 and 42.