Can titles of well-known literary works function as trade marks?

The EUIPO Grand Board of Appeal has clarified the limits of trade mark protection for literary titles in its decision concerning applications to register ANIMAL FARM and 1984 as EU trade marks, see the decision here.

Background

The Estate of George Orwell applied to register the word marks ANIMAL FARM and 1984 covering: publications, media, games, and entertainment services. The EUIPO examiner partially refused the applications on the basis that the signs were descriptive and devoid of distinctive character for content related goods and services. These refusals were upheld on appeal and referred to the Grand Board.

The Grand Board confirmed the refusals, emphasising that the assessment of descriptiveness and distinctiveness must focus on how the relevant public perceives the signs in relation to the goods and services at issue. While titles of works may function as trade marks in principle, this is only where they are capable of indicating commercial origin, which is an assessment to be made on a case-by-case basis. 

Decision

In the present case, the Grand Board held that a significant part of the relevant public would immediately recognise ANIMAL FARM as the title of George Orwell’s famous allegorical novel and 1984 as Orwell’s famous dystopian novel. Novel titles can be registrable, but only if they are not perceived as describing subject matter / content of the goods / services (i.e. descriptive), as this is contrary to registrability requirements.

The more popular or well known the literary work, the more likely it is that its title will be readily recognised as capable of containing, conveying, reproducing, providing, or being about a specific content, not a trade origin. The signs ANIMAL FARM and 1984 were found to be descriptive, since they directly indicate a key characteristic of the goods and services, namely, their content or theme. 

The Grand Board further held that the signs lack distinctive character. While the titles are closely associated with George Orwell, this association relates to the intellectual origin of the works, rather than the commercial origin of the goods or services (which could be denoted by the publisher, for example). 

In practice, the signs function as a reference to the underlying literary content and signal that the goods or services reproduce, adapt, or relate to those works, whereas the essential function of a trade mark is to indicate commercial origin. By contrast, the title of a literary work serves to identify and distinguish the work itself. 

Key Takeaways

The more successful your literary work is, the harder it is to register its title as a trade mark for content driven goods and services. Where a sign is immediately recognised as the title of a well-known work, it will likely be perceived as describing the subject matter of the goods or services rather than their commercial origin. 

Registrability of a literary title must be assessed in accordance with general trade mark principles, irrespective of its copyright status. Owning copyright in the work does not create a presumption that the title can function as a trade mark. 

Finally, it was observed that there may be a gap in protection for work titles at EU level and suggested that this could merit legislative consideration.

For more information or if you have any questions, please contact Emily Roberts or Alison Brennan, or your usual IP team contact. 

Subscribe to our Concept newsletter and receive the latest intellectual property legal updates, news and event invitations direct to your inbox.