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After eight long years of proceedings before the EUIPO and its Fifth Board of Appeal, and interventions by INTA and other interested parties, the Grand Board of Appeal decided on 19 December to uphold the partial rejection of the GEORGE ORWELL trademark, as Sandrine Collin discusses.
Due to the exceptional fame of the author George Orwell, the EU Intellectual Property Office (EUIPO) ruled that registering this name as a trademark would be perceived as a reference to the content of the goods and services concerned. Therefore, the sign was deemed descriptive and lacking distinctiveness for goods and services related to the cultural sector.
Background to the George Orwell trademark dispute
The GEORGE ORWELL trademark was filed in 2018 by the company managing the rights of the author's widow, who inherited his rights after his death in 1950. The application, covering classes 9, 16, 28, and 41, was refused by the EUIPO for a substantial portion of its goods and services, particularly those related to the cultural sector, namely audiovisual and digital media in class 9, printed matter in class 16, and cultural and entertainment activities in class 41, on the grounds that the trademark is descriptive of these goods and services.
As a reminder, a trademark is descriptive when it consists of terms that can be used to designate "the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or provision of the services, or other characteristics thereof." The use of the term "characteristic" is not insignificant, as it makes this list non-exhaustive, thus allowing for the inclusion of the subject or object to which a product or service relates.
Therefore, while in principle, the names of people, whether known or unknown, are distinctive and can certainly be registered as trademarks, the Grand Board of Appeal considered that it cannot be ruled out that, given their renown, these names might evoke a characteristic of a product or service in the minds of consumers.
Indeed, in its ruling of 19 December, the Grand Board of Appeal reiterates that the descriptive character of a trademark must be assessed in light of the perception of the relevant public.
However, there is no doubt that the name GEORGE ORWELL enjoys significant renown among the public in the EU, who will undoubtedly associate it with the great author and will therefore consider it the central theme of the products and services in question, whether a book, a film, a theatrical performance or an exhibition.
Due to its exceptional renown, the name GEORGE ORWELL loses its ability to fulfil its function as a trademark, therefore; namely, to identify a commercial origin, as the public perceives the trademark as referring to the author and not as an indication of origin.
The challenges of registering a famous name as a trademark
In their written submissions, the applicant and the International Trademark Association (INTA) denounced the unequal treatment afforded to famous names and reiterated that the right to protect the names of people, whether famous or not, should be guaranteed and should not be subject to stricter treatment.
Furthermore, if we accept that famous names can designate the content of a product or service, the same logic should be applied to non-famous names, which would then make it impossible to register personal names.
The parties also pointed out that trademark registrations already exist with the EUIPO for writers' names for similar goods and services, such as the trademarks ALFRED HITCHCOCK in class 16, ALBERT CAMUS and F. SCOTT FITZGERALD in classes 9, 16 and 41, and IAN FLEMING in classes 9, 16, 41 and 42.
They also highlight previous decisions by the EUIPO Boards of Appeal confirming the distinctiveness of THE DIARY OF ANNE FRANK and the JANIS JOPLIN trademark, which, according to the Board of Appeal, does not indicate the content or subject matter of the goods and services in classes 9 and 41, thus perfectly fulfilling its function as a trademark.
Are there different degrees of fame?
In its decision, the Grand Board of Appeal refrained from commenting on the JANIS JOPLIN case but justified the acceptance of THE DIARY OF ANNE FRANK on the grounds that Anne Frank is known for only one title, while George Orwell “is recognised, due to his very varied and extensive body of work, as one of the leading literary figures of the first half of the 20th century.”
Are there, therefore, different degrees of reputation? How can this be determined objectively?
Even though the recent decision of the Grand Board of Appeal attempts to list the non-exhaustive criteria for determining this, the assessment remains a case-by-case matter and subject to debate. The debate is still open, as Orwell's heirs filed an appeal with the Court last February.
We will await the outcome of this with interest.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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