The EUIPO Grand Board of Appeal has confirmed that the name of a famous person will be refused registration as an EUTM where the average consumer will perceive it as describing the subject matter/content (rather than the commercial source) of goods/services such as DVDs, books and entertainment services.
What has happened?
- The Estate of the Late Sonia Brownell Orwell applied in March 2018 to register the name GEORGE ORWELL as an EUTM for various goods and services. The impending expiry of copyright in some of Orwell's works is thought to have partly prompted the application.
- The application was accepted for some goods/services (which have since been split off and registered) but rejected for others. The Grand Board of Appeal of the EUIPO has now upheld the rejection, holding that the average consumer would view the mark as indicating the subject matter/content of items such as DVDs, books, and entertainment services, rather than as the commercial source of those items. It also held that the mark lacked distinctiveness.
- While the decision concerned a deceased author, it should have wider application to famous people in general, whether living or deceased. However, whether the name of a famous person is registrable for these sorts of goods/services will depend on the particular facts of each case. There is no blanket prohibition on registration.
- None of the above is surprising since it represents the EUIPO's general approach to the registrability of famous names as set out in its Guidelines. However, there had been divergent decisions in practice, hence the referral to the Grand Board.
- The decision has implications for the ability of famous people to register their names as trade marks in the EU (see below). Early registration (before widespread fame) should generally be considered. This does not mean that the names of famous people are free for all to use – advice should be sought on the trade mark position and issues such as whether an honest descriptive use defence is available.
Want to know more?
Descriptiveness
The Grand Board made it clear that there is no blanket prohibition on a famous person registering their name. However, where the average consumer would view the mark as simply describing the subject matter/content of the relevant good/service (such as a book about George Orwell) rather than indicating a single source of trade origin, registration should be refused. This is a question of fact that should be decided on a case-by-case basis.
Relevant criteria
The Grand Board identified a non-exhaustive, non-cumulative list of criteria to assess whether an author's name is descriptive, including:
- The degree of fame and recognition of the author, which might be a well-known fact or require ex officio investigation
- How widespread is the use of the author's work (including the degree of distribution, any adaptations, use in education)
- The extent of social and cultural integration of the author's name (prizes, statues, museums, parks, schools bearing the name etc)
- The period for which the author has been known – and for deceased authors, whether fame, recognition, social and cultural integration remain long after death
- Whether any nouns or adjectives have been created from the name (eg "Orwellian")
- The market reality (eg whether bookshops or libraries have sections dedicated to the author).
Application to GEORGE ORWELL
Applying these criteria, the GEORGE ORWELL mark was considered descriptive for most of the goods/services under consideration (see the table at the end of this article). The Board was of the view that the mark would be immediately and unequivocally understood as referring to the writer, his fame being a well-known fact. It concluded that the mark would be apt to indicate that the goods/services in question concern the work, life or person of the author or (in the case of items like books) that they contain his works.
Distinctiveness
The mark also lacked distinctiveness, not just because it was descriptive, but also because it would not allow the average consumer to distinguish the goods/services of the applicant from those of other undertakings without any possibility of confusion. In effect, others are using the mark and so it cannot function as an indicator of trade origin.
Copyright position 'irrelevant'
The Grand Board held that whether the author's work is still protected by copyright or not is irrelevant to the assessment of descriptiveness/distinctiveness. In particular, the fact that a work might still be in copyright does not justify granting the author a trade mark registration (which potentially lasts indefinitely) for their name.
However, the copyright position can be indirectly relevant to the assessment of descriptiveness/distinctiveness of the author's name since it may impact patterns of trade in the relevant goods/services. There was no evidence that this was the case with the GEORGE ORWELL mark though.
Other grounds considered
The Grand Board also considered whether the mark would be potentially objectionable based on two other absolute grounds that – although not raised against the GEORGE ORWELL EUTM application - had nonetheless been commented on by third parties. The Board concluded (obiter, but correctly) that there was no basis for an objection on the ground that:
- The registration of the mark was contrary to public policy/morality - seeking to register a famous author's name does not constitute misappropriation of cultural heritage.
- The marks adds substantial value to the goods by prolonging copyright protection - obtaining a trade mark for an author's name would not extend the life of other IP rights because it is the literary work itself (not the author's name) which is protected by copyright and which, once in the public domain, can be freely used.
Next steps
It is possible that the ruling will be appealed to the General Court. Practitioners and commentators would no doubt welcome a ruling from the CJEU on this issue (although the CJEU seems unlikely to take a different stance to the Grand Board). Meanwhile, we also await Grand Board rulings on whether the words 1984 and ANIMAL FARM are registrable. It now seems unlikely that these marks will be accepted for registration (for similar reasons to those given in the GEORGE ORWELL decision).
What does this mean for you?
- The decision makes clear that, for "content" goods/services (largely Classes 9, 16, 41), fame creates a risk of a descriptiveness/distinctiveness objection: the more celebrated the person, the more likely their name indicates subject matter rather than trade source.
- While the Grand Board is careful to limit its reasoning to the names of famous authors and (through its endorsement of the Sibelius decision) composers, it's clear that the reasoning could extend to any famous person who might form the subject matter/content of – or otherwise describe – goods/services.
- Each case will be decided on its own facts. While some famous people are likely to form the subject matter of books or to appear on posters, others are not. There is therefore scope to argue the point on a case-by-case and item-by-item basis.
- Although Orwell is deceased, the Grand Board's reasoning could equally apply to those who are alive (although arguably there is more scope for the names of iconic authors and composers to become descriptive as time goes on).
- UK law on the registrability of the names of famous people is closely similar to that set out by the Grand Board. However, the way the laws are applied in practice and the starting assumptions are slightly different. For example, unlike the EUIPO, the UKIPO tends to focus its objections on image carriers (posters, postcards etc) and to assume that media goods (books, films etc) are authorised and so not objectionable, at least where the famous person is still living.
- The differences in practice both between and within the UKIPO and EUIPO mean that applicants should not place too much weight on previous acceptances/refusals. Indeed, some of the reasoning by the Grand Board on why particular names have been accepted/rejected in the past seems tenuous in places (and even the particular goods/services accepted/rejected in the GEORGE ORWELL case does not always appear consistent).
- While possible in theory, it would seem difficult in practice for the name of a famous person subsequently to acquire distinctiveness through use where there are multiple sources of the goods/services in question.
- Those in the spotlight should consider applying to register their names as trade marks before they become famous to avoid/limit objections (subject to any possible genericism and non-use claims down the line). Early registration will usually strengthen a person's position.
- Brand owners should not assume that the names of famous people are free for all to use. They should clear all uses and take advice on whether the honest descriptive uses defence applies in any given scenario.
- The decision does not cover the scenario where a third party applies to register the name of a famous person, where additional issues arise.
Examples of goods/services refused by the Grand Board:
- Video tapes, DVDs, CDs, films, podcasts in Class 9.
- Printed matter, instructional and teaching material, publications, magazines, periodicals, books, pictures, photographs, posters, paintings in Class 16
- Entertainment, cultural activities, educational services, events in Class 41.
Note that the EUIPO did not object to the registration of the mark for items such as computer games and postcards and the registrability of the mark for these items was not directly considered by the Grand Board. However, the Grand Board's decision implies that these items might also be objectionable more generally.
- Also note that the EUIPO accepted the mark (which was then divided and registered) for items such as luggage, wallets, household items, ornaments, clothing, games, jigsaws, and political consultancy services in Classes 18, 21, 25, 28 and 45.
