Can book titles be registered as trade marks?

The intersection of copyright and trade marks often throws up questions about what is capable of being registered as a trade mark and therefore, benefit from the perpetual protection a trade mark registration can offer (subject to use requirements). The various IP rights creators can benefit from become all the more important as works reach the end of their copyright protection period, and the holders seek to obtain other forms of protection for their works.

This topic was considered in the recent EUIPO Grand Board of Appeal decision relating to applications to register the trade marks 1984 and ANIMAL FARM, the titles of well-known dystopian works of fiction created by the author, George Orwell.

The story begins with applications to register these titles as EU trade marks by The Estate of the Late Sonia Brownell Orwell, on behalf of the Orwell estate. The EUTM applications covered a range of goods and services including classes 9, 16, 28 and 41 between them. The applications were initially partially refused in relation to some of the goods and services in these classes on the basis that the marks would evoke the widely known books and that the goods or services in question which relate to the books, and therefore, would be directly descriptive of the subject matter of the goods and services in question. Furthermore, because the books are so well-known, the applications could not be distinctive and act as an indication of origin of the goods and services, but would simply be recognised as a reference to the title of the books.

The case made its way to the Grand Board of Appeal on the basis that there has been an inconsistency in how book titles have been treated in the past - the applicant referenced a registration for the Diary of Anne Frank by way of an example, as well as the fact that the novels themselves are still subject to copyright protection and therefore there is a presumption of good faith in applying to register these marks, on the basis that any examples of usage of these titles should be approved by and with the consent of the copyright holder. Further examples of registered titles cited by the Board of Appeal include THE JUNGLE BOOK and PINOCCHIO. The Grand Board also considered written observations filed by INTA in support of the applicant's position - i.e. that there should not be a blanket approach to the examination of applications which include the title of books.

In its decision, the Grand Board referenced the recent CP16 project initiated by the EUIPO, which aims to assist parties in the assessment of signs describing the subject matter of the goods and services for which protection is sought and which aims to provide a consist approach throughout the EU for the definition of subject matter. In particular, as part of the assessment of the application, it will have to be determined whether, in the context of the relevant goods and services, at least one of the possible meanings of the sign could be immediately understood by the relevant public such that it will be recognised as describing the specific subject matter of the goods and services for which protection is sought.

The Grand Board dismissed the appeals and reinforced the finding of the examiner. It was noted that trade marks consisting solely of a book title may be descriptive in relation to goods and services that could be perceived as containing or dealing with the well-known story, a new version of it or a theme linked to the story and that the marks in question related to famous books which were likely to be perceived as the titles of these works and would not therefore function as a badge of origin.

The Grand Board held that famous book titles will be incapable of performing an independent role in relation to goods and services that could merely have the general story or genre as their content (e.g. publications or cultural events). However, the Grand Board did not go so far as to confirm a general approach for book titles, stating that the assessment of whether a book title has reached a sufficient degree of recognition should still be subject to a case-by-case analysis, taking account of the facts of the individual case.

This may not be where the story ends, as we will wait to see if an appeal is filed by the Orwell estate to the General Court of the European Union.