Due to the differing decisions being issued in connection to applications for names of famous individuals in connection to classes 9, 16 and 41, this case was referred by the Fifth Board of Appeal to the Grand Board.

Observations regarding this case were provided by the International Trademark Association (“INTA”). The Executive Director of the Office was also invited by the Grand Board to provide opinions to the questions raised by the case which were of general interest.

In their response, apart from other comments, the Executive Director highlighted that descriptive status in connection to books can likely only be achieved when an author reaches a substantial level of fame. The end of copyright protection for the work written by the author was said to potentially have an effect to the overall assessment of descriptiveness, as expiration might increase the visibility of the author’s work. It was also highlighted that who owns the application is not relevant for the assessment of absolute grounds of objection, as it is property that can be transferred to another.

Decision

Copyright protection in the written work

The Grand Board referred to the Executive Director’s comment that existence of copyright can lead to a sign becoming perceived as an indicator of origin. In this case, however, the evidence submitted by the applicant was found to only further confirm the already well-known status of the author as a famous figure. It was not capable of establishing that throughout the use of GEORGE ORWELL in connection to the copyright protected work, a commercial origin significance was established in the consumers’ minds.

It was found that the application in question was analogous to the decision in SIBELIUS case (15/05/2018, R 2382/2017-2, SIBELIUS) where the application for the name of a famous composer was rejected, most notably, for “magnetic data carriers, recording discs” in class 9, “printed matter” in class 16 and “entertainment” in class 41. In both cases, the fact that the works created by the composer/ author had copyright protection was not found to be decisive on how the mark would be perceived by the public. 

Assessment of famous marks

The Board agreed with INTA that names of authors are assessed in the same way as any other word mark and will only be refused if overall assessment reveals that one of the absolute grounds of refusal applies to it.

Earlier applications for famous names

The Applicant put the argument that trade mark applications for famous names have previously proceeded to registration for goods and services in classes 9, 16 and 41. The Board rejected this argument and highlighted that decisions of examiners do not bind the Grand Board, diverging decisions was one of the reasons why this case was referred to them and noted that they did not have an opportunity to comment on the examination decisions of the marks referred to by the Applicant.

Factors considered when assessing descriptiveness

When assessing the descriptiveness of the mark GEORGE ORWELL, the Grand Board referred to the factors provided by the Executive Director. The Board took into account that:

• There is a wide degree of knowledge of the author. It was highlighted that Orwell has achieved vast reputation, is an important literary figure and has a volume of written work, as well as written work about him. This was distinguished from the application for Le journal d’Anne Frank, which is the only written work the author is known for.
• Orwell’s written work has been studied and taught.
• The well-known status of the author continues with the passing time.
• “Orwellian” is a dictionary term.
• Books written by Orwell would likely be prominent in the political fiction section of bookshops.

After considering these factors, the Board found that in connection to the objected goods and services the mark indicates their content. The mark, therefore, was found to be descriptive for the objected goods and services and non-distinctive. It was also highlighted that the mark was non-distinctive even if it would have not been found to be descriptive.

Takeaways

Whilst an application for a trade mark covering a name is capable of designating origin and should not be assessed in any different way than other word marks, once a name reaches a certain level of fame, it will perceived by the public as merely describing the content of certain goods and services in classes 9, 16 and 41, and can no longer function as a trade mark. Evidence of the well-known status of a mark will only be beneficial for an applicant if it can show that they were able to educate the consumer that goods and services bearing the mark come from a single source. Otherwise, the evidence will simply enforce the descriptiveness and non-distinctiveness objection.