Praneet Pandey & Kalhan Safaya*
In March of 2021, the International Trademark Association (herein referred to as INTA) brought certain ‘amicus briefs’ before the Grand Board of Appeals (GBoA) of the European Union Intellectual Property Office (EUIPO) apropos of the three parallel appeals put forth by The Estate of The Late Sonia Brownell Orwell. These three appeals by the estate were filed against rejection from registration of the name: “George Orwell” and the titles of his acclaimed works: “1984” and “Animal Farm” as trademarks under classes 9, 16 and 41 of goods and services, as required under Article 33 of the European Union Trademark Regulations (EUTMR).
The rejection of applications by the Orwell estate instigated the INTA to submit their briefs recognizing the EU courts’ inconsistency on matters related to trademark registrations for famous names/phrases, a fact also acknowledged by the BoA in its decision while referring the matter to the GBoA.
The Orwell case and EUIPO’s approach
“George Orwell” is the nom de plume of late Eric Arthur Blair, an internationally acclaimed English novelist, journalist, and critic. He also published poems, and combative reportage, but is most known for his novels “Animal Farm” and “Nineteen Eighty-Four” or “1984”. Under European Union law, the copyright protection of published works of literature lasts until 70 years after the death of the authors following which the works fall under the public domain. In the case of George Orwell’s novels, the copyright protection for his works was expiring in 2021 and as such requests were made by the Orwell Estate (Estate of the late Sonia Brownell Orwell overseeing the author’s IPs) to file for trademark protection for the three names mentioned above. As a matter of fact, this is a fairly common practice typically resorted to as an alternate solution against misuse of intellectual properties (under specific classes of goods and services) no longer protected under IP laws.
In the present case, the name ‘George Orwell’, was rejected registration under classes 9 (video/audio multimedia and more), 16 (printed matter) and 41 (entertainment/cultural activities, etc.), under Article 7(1)(c) EUTMR– stating that the fame and repute of the author in the field of literature and journalism has rendered his name non-distinctive and descriptive in nature and that the general public may associate his name to the kind and quality of content/subject matter for which the trademark is sought. A similar reasoning was used by the EUIPO with respect to the application for ‘Animal Farm’ and ‘1984’.
Modern IP law even allows for audible signs and olfactory (smell/odor) marks to be registered as trademarks, given that the basic premise for their assessment remains the same: that a mark is not descriptive of the products/services it represents and that it is distinguishable for the purpose it serves under relevant classes of goods and services. Understandably, the primary problem with registering famous names/titles is that of usage (or over usage) which can negatively affect their distinctiveness as defined under law. (Article 7(1)(d) – EUTMR).
EUIPO’s approach to examination of marks for registration, in theory, gives appropriate weightage to the European Union Trademark Regulations, the legal precedents and the guidelines for examination. The problems, however, lay in the inconsistencies between the precedents and the guidelines when it comes to defining and applying the ‘degree of reputation’ angle to a case, which may affect the eligibility of a famous name or title on grounds of non-distinctiveness or descriptiveness. The guidelines recognize that the name of an individual person would be considered as distinctive (irrespective of its commonality) even when the name is a famous one, but an objection would be raised when the famous name being registered is non-distinctive ‘in relation to the class of goods and services it is being applied for’. (See- Section 4, Chapter 3 EUIPO Examination Guidelines, 2017)
This guideline was part of the reason why in 2011, Lionel Messi’s request for a trademark (logo + the word ‘Messi’) was rejected upon a counter appeal filed by a sportswear brand called ‘Massi’. The European Court of Justice, in 2020, overturned the decision, suggesting that taking Messi’s reputation and fame into account, the mark “Messi” would be considered ‘too well known to be misconstrued’ and that the public would not confuse it with anything else. (EUIPO v Messi Cuccittini)
Descriptive and distinctive marks under EU law
Within the meaning of Article 7(1)(b) EUTMR , the meaning of a distinctive trademark follows:
- The mark’s ability to identify the product/service under its relevant category (i.e. the mark needs to be distinct in and among the group of items in a particular class) (see: Vorsprung Durch Technik & Eurohypo)
- The mark’s perception in the public domain with regard to its relevant class/category. (eg. ‘Madonna’ being associated with items in class 9, audio-video multimedia)
The above observations are also used by the EUIPO and the EU courts with reference to Article 7(1)(c) EUTMR to define the degree of descriptiveness of a mark; and it is only when a mark is sufficiently, expressly and directly suggestive of the kind and quality of the goods/services does it come under the category of prohibition. (See: Streamserve v OHIM) In simpler terms, while applying the test of absolute grounds of rejection, a trademark’s descriptiveness should be adjudged restrictively leaving room for the benefit of the doubt to emerge in cases of famous names/titles rather than disregarding them completely owing to their fame.
As for the ‘Animal Farm’ case, ‘1984’ case and other such kind, the idea is that the titles can serve as trademarks so long as they are not describing the subject matter of the items they represent and be safely identified as the source of commercial origin of those items, i.e. the titles may not be so generic that they have ‘entered into the language’ and now the public perception of them goes beyond the title of a story/movie to refer to a whole genre of related items. Example: the word ‘thermos’ which is now synonymous with the item itself and could be considered as a name that has ‘entered the language’. This brings forth another angle of consideration: What happens to marks that have already entered into the language? (customary marks).
Marks (words, logos, etc.) that have been absorbed into the language and the linguistic culture to be seen as words of common use cannot be registered as per Article 7(1) (d) EUTMR; A relevant factor while deciding this is the fact that public perception can change over time. In case of famous names, the established precedent is that the name, so long as it isn’t seen to be associated with certain items/services to the point that it has become generic or absolutely descriptive, may be registered as a trademark even if it holds certain repute. This has been the case with many other famous writers and artists in the past such as ‘Janis Joplin’ and ‘F. Scott Fitzgerald’, both of which are registered trademarks already.
However, in the Orwell cases, EUIPO’s reasoned that the name ‘George Orwell’ and the book titles have already come to be recognized by the general public as part of a larger cultural phenomenon/trend (gained a symbolic value) and hence they would be perceived by the public as describing a genre of literary works based on the previously rejected trademarks for ‘PINOCCHIO’ (where the word ‘Pinocchio’ was considered to be too descriptive and almost synonymous with kinds of stories with morals linked with lies), and ‘THE JUNGLE BOOK’ (March 18, 2015, R 118/2014-1, The Jungle Book) (where the book, its title and its characters were perceived to have entered into the language and culture to be synonymous with media based on a jungle survival story). This anomaly in decision making is an unwarranted side-effect of the situational (case-by-case) approach adopted by the EU courts in deciding the extent of effects that fame would have over a name/title/phrase, etc. while getting a trademark.
The INTA, in its briefs submitted before the GBoA, based its arguments in line with the statutory application and past recommendations of the EUIPO (in cases similar to the Orwell case) which explicitly acknowledged that famous names and titles can, in principle, be used as trademarks. They cited precedents on the matter such as the ‘ANNE FRANK’ case (the trademark ‘Le Journal d’Anne Frank’ was considered acceptable since “the expression ‘Anne Frank’ is in no way descriptive and strictly speaking does not mean anything”), to attempt to carefully lay down the issues that need to be tackled by the GBoA. (See- BoA R 2401/104-4 Anne Frank par. 26)
Furthermore, they also presented that an author’s name or book title do not necessarily describe any kind of goods or services – the average consumer will not understand the name or title as being a generic term for books or any kind of book, unless (in exceptional circumstances when) the title is purely descriptive of the subject matter of the book since this would make all famous marks ineligible for registration after they have acquired reputation. (See p. 17, Amicus Brief-INTA- ‘ANIMAL FARM’ & ‘1984’)
Their arguments stood in proposition with the Orwell Estate (the Estate of Late Mrs. Sonia Brownell) and went on to acknowledge how the registration of famous names/titles should happen on a case-by-case basis albeit with reasonable restraint. They also did not fail to emphasize the legal gravity of the matter before the board in terms of its undeniable impact over future cases of this kind.
It seems that in many ways the George Orwell case has once again opened a rare window of opportunity for the EU courts to tackle the discrepancies surrounding EU Trademark law with reference to famous titles/names/ etc. As it was in the case of ‘Messi’ where relative grounds of refusal (similar sounding trademark undertakings) came into play, absolute grounds of refusal, as per the EUIPO guidelines, also exist to maintain a balance in the marketplace and avoid misuse of trademarks that may offer an undue advantage to the operator.
A possible solution in the long run could involve creating a framework for adjudging the ‘degree of distinctiveness’ and the ‘degree of descriptiveness’ in cases related to famous marks to do away with some of the ambiguity, ease out the overall process and help the applicants better discern the scope of their signs/marks before applying to reduce the number of rejections that come attached with contentious reasoning. As the INTA also believes, the outcome of this case may very well be a game changer for the future of EU trademark law and the parties involved in it must treat it that way.
* Praneet Pandey & Kalhan Safaya are third-year students of Law (B.A. LL.B) at Hidayatullah National Law University, India