George Orwell book titles ruled ineligible for trade mark protection for some goods and services

IP lawyer and EU and Irish trade mark attorney Jane Bourke of Pinsent Masons said that a foundational principle of trade mark law that brand owners need to understand is that a sign needs to indicate the origin of goods and services. It is the essential function of a trade mark, to identify the commercial origin of goods and to distinguish them from other businesses, she said.

In this case, the Grand Board of Appeal at the EU Intellectual Property Office (EUIPO) determined that the signs ‘Animal Farm’ and ‘1984’ were linked to the intellectual origin of the works by Orwell. It ruled the words should not be registered as EU trade marks for the goods and services applied for as a result.

The estate of Orwell’s late second wife had sought to register the two titles as trade marks covering a wide range of other categories of goods and services. Examples include multimedia content, games, cultural activities, films, TV, events, festivals and exhibitions, recorded media, shows, and seminars and educational services.

Bourke said: “One of the other lessons for those launching new brands to understand from this ruling is that marks are likely to face refusal if they are descriptive or lack distinctiveness. These are absolute grounds that are frequently raised by trade mark offices when refusing trade mark registrations. From a strategic perspective, this underscores the importance of selecting inherently distinctive signs at the outset, to maximise registrability and long-term enforceability.”

In this case, an examiner at the EUIPO initially refused the applications as they considered the two signs to be partially ineligible for registration under EU trade mark law.

The EU Trade Mark Regulation 2017 provides that trade marks should not be registered if they are devoid of any distinctive character, or if they consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

The examiner considered that the relevant public – the English-speaking consumer – would understand each sign as a reference to the famous titles, and would perceive the titles as indicating the goods and services the estate wished to register the marks for; for example books.

Orwell’s estate challenged the examiner’s decision. Among other things, it argued that there was precedent for the registration of literary titles as trade marks, citing the registration of ‘Le Journal d’Anne Frank’ as a trade mark in France as an example. It also highlighted how the book ‘1984’ remained subject to copyright protection at the time and pointed to EUIPO guidelines that it argued provided for a presumption of good faith and for marks to be registered where copyright was still running.

The appeal was referred to the Grand Board, but not before the estate was successful in applying for registration of the two marks as EU trade marks for different categories of goods and services than those the examiner had objected to, including clothing, leather goods, kitchen utensils, and legal services.

According to the Grand Board’s ruling, book titles are not precluded from being registered as trade marks where they are capable of indicating commercial origin of the goods or services in question. However, it considered the signs ‘Animal Farm’ and ‘1984’ to be so closely associated with the Orwell book titles in the eyes of the relevant EU public - being mainly English-speaking Irish and Maltese consumers - that they do not meet the criteria for registration as trade marks for the categories of goods and services the estate sought registration for.

The Grand Board pointed to other examples of famous books, such as ‘The Jungle Book’, which have “entered into everyday language as synonyms for a particular type of story or genre”. Where this happens with book titles – or, by analogy, the names of music groups, songs, films or actors – there is a risk that they could be perceived as descriptive of the goods and services for which trade mark protection is sought, rendering them ineligible to be registered as trade marks, it said. This was the case with ‘Animal Farm’ and ‘1984’, it determined.

The Grand Board further drew a clear distinction between copyright and trade mark protection: copyright protects the original character of the creation, whereas trade mark law protects the ability of a sign to distinguish the commercial origin of goods or services. The board also made clear that the fact that a book is famous will not automatically be a ground for refusing or granting registration.

“A single literary work may be published, reproduced, and distributed by different publishers operating under distinct trade marks,” the Grand Board said. “Those trade marks serve to indicate the commercial origin of the physical or digital goods and services placed on the market, as well as to signal a certain level of quality associated with the undertaking responsible for their production and distribution. By contrast, the title of the literary work, as such, primarily designates the intellectual content of the goods, that is, the protected work itself.”

“Accordingly, while trade marks affixed to books or related services inform consumers about the undertaking responsible for their manufacture, distribution, or provision, the title of a literary work will generally be perceived as referring to the intellectual content of those goods or services. It follows that such a title will only fulfil a trade mark function where, in the perception of the relevant public, it departs from that primary descriptive role and is instead understood, first and foremost, as an indicator of commercial origin,” it added.