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Tuesday, 5 January 2016

‘Le Journal d’Anne Frank’: sufficiently distinctive to be a trade mark, says OHIM Fourth Board of Appeal

Nedim Malovic
Is the title of a (well-known) book, ie The Diary of Anne Frank, distinctive enough to be registered as a trade mark for (among other things) ... books?

Yes, said the Fourth Board of Appeal of OHIM.

In a decision issued last summer that has so far escaped the IPKat's attention, the Board overturned the earlier decision of the examiner and allowed designation of the European Union (EU) in respect of the international registration of the word mark ‘Le Journal d’Anne Frank’.

The following analysis provided by IP enthusiast Nedim Malovic (Stockholm University) - also to be published as a Current Intelligence note for the Journal of Intellectual Property Law & Practice (Oxford University Press) - explains what happened.

Here's what Nedim writes:

"In 2013, the Anne Frank Fonds (the owner) submitted an application to OHIM to have the EU territory designated in respect of the international registration of the word mark ‘Le Journal d’Anne Frank’. 

The application was for goods and services in Classes 9 (DVDs, videocassettes, electronic publications, exposed cinematographic films), 16 (printed matter, periodicals, magazines, newspapers and books) and 41 (theatre productions, showing of films, arranging of guided tours for cultural or educational purposes) of the Nice Classification.

In August 2014 the OHIM examiner rejected the application to register ‘Le Journal d’Anne Frank’ as a Community trade mark on grounds that the mark comprised solely the title of a book which is a well-known story and, as such, could not be considered sufficiently distinctive. It therefore failed to meet the registration requirement set out under Article 7(1)(b) of the Community Trade Mark Regulation (CTMR) with respect to the goods and services listed above.

In her decision the examiner considered a number of points before concluding that the word mark ‘Le Journal d’Anne Frank’ should be refused registration pursuant to Article 7 (1)(b) CTMR, including – among other things – that:

a.    Biographical details of Anne Frank’s story are well-known to the public, and have formed the subject of a number of adaptions originating from different sources;
b.    The titles of the books in the Harry Potter series registered as Community trade marks could not be compared to the mark at hand since Harry Potter is a fictional character;
c.    The sign ‘Le Journal d’Anne Frank’ does not contain any distinctive elements.

In September 2014 the owner filed notice of appeal against the examiner’s decision, claiming that the fame of a book could not prevent its title from functioning as an indicator of origin.

Also a trade mark
The decision of the Fourth Board of Appeal 

The Fourth Board of Appeal held the appeal admissible and well-founded.

First, the Board found that whether a work or its title are widely known is a vague criterion which is difficult to quantify. Even if the title ‘Le Journal d’Anne Frank’ is well-known to the public, that title is only known in relation to a specific book which tells a specific story. The existence of multiple versions or adaptions does not affect the fact that ‘Le Journal d’Anne Frank’ is the unique and distinctive title of a specific book. Furthermore the expression ‘Anne Frank’ is not descriptive because it consists of a forename and surname, and has not become part of the French language taking on a meaning that would not escape the public. The phrase ‘Le Journal d’Anne Frank’ as a whole describes neither the goods or services at issue nor any of their characteristics.

Secondly, the fictional or real-life nature of a name featuring in the title of a book (eg Harry Potter) has no bearing on the distinctiveness of the trade mark as a whole. When used in the context of the title of a work, ‘Le Journal d’Anne Frank’ is no less distinctive than other signs, when applied to goods and services listed in Classes 9, 16 and 41.

Thirdly, the Board ruled out that the repute of a name might constitute a barrier to the registrability of a sign. By excluding the repute of a specific word mark, the title of a book serves to distinguish, by its very nature, a certain book from other works. The distinctiveness of a mark within the meaning of Article 7(1)(b) CTMR means that the mark serves to identify the origin of the goods or services of a certain undertaking, and therefore distinguishes those goods or services from those of other undertakings (see Smart Technologies, para 23). ‘Le Journal d’Anne Frank’ is not devoid of distinctive character in so far as it designates the origin of a certain product, because consumers would ultimately be able to recognise it as originating from the owner under Classes 9, 16 and 41, and distinguish them from the goods of other undertakings.

But still in copyright?
Practical significance

This decision was issued together with a twin decision of the Board of Appeal concerning the EU designation of the international trade mark ‘Das Tagebuch der Anne Frank’.

Both can be contrasted with a number of decisions of national IP offices that have instead refused to register The Diary of Anne Frank’ and its various language versions as trade marks, including the UK Intellectual Property Office (IPO). 

In its 2013 decision, the IPO examiner found that use of the sign The Diary of Anne Frank’ could not be considered use in a trade mark sense, ie to distinguish the goods of one publisher from those of another, but rather use which indicates to a potential reader the subject matter of the book. As such, the IPO examiner concluded that at the time of the application to register this phrase as a trade mark the average consumer had not been educated into seeing the sign as indicating the trade origin of the good and services. 

In its decision the Board of Appeal addressed some of the points previously considered by the OHIM examiner, but failed to explain conclusively in what sense Le Journal d’Anne Frank’ could be considered as functioning as a badge of origin.

An additional – broader – point raised by this decision of the Fourth Board of Appeal of OHIM concerns the theme of overlapping IP rights. Although issued in a different context, in his Opinion in Philips, Advocate General Ruiz-Jarabo Colomer noted how (para 30) a trade mark cannot serve to extend the life of other rights which the legislature has sought to make subject to limited periods.

Anne Frank died at Bergen-Belsen in 1945, and it is currently unclear [see here and here] whether copyright in her works, notably her Diary, has lapsed. This is because the version of the Diary eventually published was the resulted of a fairly extensive editorial work undertaken by her father, Otto, who died in 1980.

Standing the uncertain copyright status of the Diary, one may wonder whether and to what extent a registered trade mark consisting of the title of this work may prevent uses of it that would be (have been?) restricted by copyright, eg new editions (including critical ones), translations and adaptations, and whether – from a policy standpoint, this outcome is a desirable one.”

6 comments:

PuzzledAttorney said...

""The phrase ‘Le Journal d’Anne Frank’ as a whole describes neither the goods or services at issue nor any of their characteristics."

Really?

"Journal": diary, a book in which one keeps a daily record of events and experiences.
"d'Anne Frank"': of Anne Frank.

I cannot imagine how the Tribunal reached the conclusion above. Remarkable.

Anonymous said...

PuzzledAttorney: I agree in so far as the word "journal" is not be the most distinctive element of the expression. But your remark implies that "Anne Frank" describes the goods or their characteristics. This would mean that a trademark consisting of forename+surname is never a valid one. It's just as if you considered that the mark "Shoes by Paul Smith" in cl 25 is not valid because it conveys the message that the shoes you're buying were (might have been) designed by Paul Smith.

PuzzledAttorney said...

I guess the point I make is that a diary inherently has a key (and some would say fundamental) characteristic - who is the diarist? Events in whose life are being described? One might arguably say that the diarist was an essential characteristic of a diary, since the identity of the diarist principally determines the value of the diary.

One cannot look at shoes and determine who designed them without further inquiry, and for certain shoes the question may not be important. For a diary, the situation is wholly different - there is a factual question as to whose life is being recorded.

I invite comparisons with the registribility of "The Biography of William Churchill" or "The Plays of William Shakespeare", or even "Paul's Letter to the Ephesians".

Hence my puzzlement.

Anonymous said...

As a member of society and language user I am extremely offended by this decision. There is only one remedy: a concerted effort to dilute this trade mark.

Kind regards,


George Brock-Nannestad

Anonymous said...

Readers may like to know that the decision arrived at by the IPO examiner was in fact upheld on appeal to the Appointed Person - see
https://www.ipo.gov.uk/t-challenge-decision-results/o28715.pdf

Thomas Dillon said...

To my mind ‘Le Journal d’Anne Frank’ is obviously distinctive of books and other products, the problem arises only in relation to Anne Frank's Diary, where it is descriptive.

It is in fact quite common to register the names of films as trade marks (Mulan, or Fast and Furious, I think are examples), but how far this works as an anti-piracy tool is open to debate (cf R v Johnson [2003] UKHL 28).

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