Can Charlie Chaplin’s character “Charlot” be registered as an EU trade mark?

In the era of silent films, Charlie Chaplin did rise to become a worldwide icon through his screen persona, the Tramp (Charlot in several languages). It may therefore come as no surprise that companies, to this day, attempt to monetize in his iconic image.

In a decision (only available in French) issued a few days ago, the EUIPO upheld the Office’s objections after having established that the below figurative depiction of Charlot is not eligible for EU trade mark (EUTM) registration:

Background and analysis

In 2022, Roy Export SAS sought to register the above figurative mark as an EUTM in Classes 9 (scientific apparatus and instruments, photographic apparatus and instruments, cameras), 35 (advertising, business management, clerical services), 38 (telecommunication services), 41 (teaching, training, entertainment services), and 42 (computer software design) of the Nice Classification.

Later that year, the Office raised an objection in accordance with Article 7(1)(b) – (c) and 7(2) of Regulation 2017/1001 (EUTMR). In particular, it considered that, given the exceptional reputation of Charlie Chaplin, the relevant consumers, being the general public in the whole of the European Union, comprising of businesses, professionals, and specialists to whom certain goods in Class 9 and most services in Classes 35,38 and 42 would be addressed, would recognize Charlie Chaplin, through the above representation, as the famous comic character Charlot. Charlot embodies and conveys modern, liberal, and humanist values by denouncing totalitarianism and the Nazi ideology through films like Modern Times (1936) and The Great Dictator (1940).

Therefore, the relevant public, which perceives the familiar and humorous image of the character Charlot in a favourable light having regard to the modern, liberal, and humanist values to which he is associated, would see the mark as an advertising representation of this character, whose purpose is to encourage or provoke the purchase of the product or the subscription to the service in question. Thus, the mark would not be perceived by the relevant public as an indication of the commercial origin of those goods and services, but instead as a mere promotional image of Charlot whose attractiveness and values would reinforce the attractiveness of the products and services in question.

The above perception by the consumer would be all the more proven given that the use of the image of famous movie character for exclusively advertising purposes is relatively common in many sectors. This has been particularly the case of the character of Charlot who, for several years, was associated with the promotion of IBM company products.

Furthermore, the relevant consumer would perceive the mark as providing information specifying that the services in question have, as its subject, the character of Charlot. As a result, such a mark would be considered as describing the thematic content of those services.

The applicant did not submit any observations within the time limit set by the EUIPO and the application was therefore rejected pursuant to Articles 7(1)(b) – (c) and 7(2) of the EUTMR.

Comment

The question of characters as trade marks is not new, and only a few weeks ago The IPKat reported on a series of applications for figurative marks representing historical figures as AI imagined them to have looked like. In all this, the Charlot case is of particular interest because the Office emphasized the values associated with the character portrayed by Charlie Chaplin as being such as to render the mark non-registrable due to the advertising perception conveyed by such values. In any event, when it comes to these types of applications, the fact remains that the fame and repute of a character may be a substantial problem trade mark-wise, as it has the effect of rendering the relevant sign unlikely to be perceived by consumers as an indicator of commercial origin.