Famous but not distinctive: ANIMAL FARM and 1984 failed as trade marks because they were successful as books

One of the unresolved questions in trade mark law is whether titles of books, films and similar goods can be protected (and genuinely used) as trade marks. The Grand Board of Appeal answered this question for George Orwell’s famous book titles “ANIMAL FARM” and “1984” in a recent decision.

Background

In 2018, The Estate of the Late Sonia Brownell Orwell (“Orwell Estate”) filed two EU trade mark applications for the word marks “ANIMAL FARM” and “1984” for goods and services in classes 9, 16, 28 (“ANIMAL FARM” only) and 41, including DVDs, books, games, toys and entertainment services.

The European Union Intellectual Property Office (“EUIPO”) partially refused both applications, finding them descriptive and non-distinctive for content-related goods and services. The Orwell Estate filed appeals to the EUIPO’s Board of Appeal (“BoA”). In 2020, the Fifth BoA referred the case to the Grand BoA (“Grand Board”), inter alia, because there was diverging case law on the registrability of book titles.

The Grand Board's decision

The Grand Board dismissed the appeals. 

1. Descriptiveness

It started its examination with the question of descriptiveness under Art. 7(1)(c) EUTMR.

The relevant public was deemed to be the average consumer in Ireland and Malta, because these countries have the closest connection to the UK, where Orwell’s novels are most famous.

a. Meaning of the signs

The Grand Board had little difficulty finding that both “ANIMAL FARM” and “1984” are “common knowledge” among the relevant public as titles of George Orwell's novels. Factors supporting this conclusion included the novels’ widespread fame, their inclusion in educational curricula in Ireland and Malta, the passage of more than 70 years since first publication, the numerous film, television and theatrical adaptations and the cultural assimilation of their themes. The fact that the Orwell Estate controls these adaptations by contractual arrangements was disregarded. They are not obvious to the relevant public and do not shape their perception.

The Grand Board also considered irrelevant that the narrative of both stories is complex. The decisive criterion is not the degree of narrative complexity, but whether the relevant public readily associates the sign with commonly understood ideas or characteristics. “ANIMAL FARM” was deemed commonly understood as a political allegory illustrating how revolutionary movements may lead to systems of oppression and totalitarian rule. “1984” centred on the consequences of totalitarianism, mass surveillance and repressive regimentation of persons and behaviours within society.

b. Description of the subject matter

The Grand Board found that the subject matter or content of the goods or services can constitute “other characteristics” in the meaning of Art. 7(1)(c) EUTMR. A sign falls foul of this provision if it designates the thematic or intellectual content of the goods or services. However, Art. 7(1)(c) EUTMR does not apply merely because the sign is the title of a book but only if the sign can be perceived by the relevant public as describing the subject matter of the goods and services.

The Grand Board required that (a) the potential for goods or services to provide consumers with imagery or information about someone or something denoted by the sign is sufficiently real and significant to be a material consideration and (b) it is reasonable to believe that the sign will be recognised by the relevant public exclusively as a description of the content or character of the goods or services and not also as a source indicator.

On that basis, the Grand Board found that the goods and services in classes 9, 16, 28 and 41 are capable of containing, conveying, reproducing, providing or being about a specific content, that was immediately and without further thought connected with the themes of the novels “ANIMAL FARM” and “1984”.

2. Non-distinctiveness, Art. 7(1)(b) EUTMR

On distinctiveness, the Grand Board observed that the relevant public primarily relies on titles and authors to identify and select works. By contrast, it relies on publishers or other trade indicators to identify the commercial origin of the relevant goods and services.

The Grand Board found that “ANIMAL FARM” and “1984” are famous enough to be immediately perceived as titles of literary works, which is why they will be understood as referring to those works and not as indicating their commercial origin when used in connection with the relevant goods and services. Thus, they lack distinctiveness.

3. The interplay with copyright

The Grand Board referred to comments from the EUIPO’s Executive Director that titles can be protected by copyright and by trade mark law. However, this potential cumulation of rights does not mean that titles are not subject to the same principles of trade mark law as any other sign.

The Grand Board acknowledged that copyright may constitute a relevant factual consideration, in that it may shape market conditions and thereby influence consumer perception. However, it cannot, on its own, confer or preclude distinctive character. Since the Orwell Estate had failed to show that copyright had given rise to specific market conditions capable of altering the descriptive perception of the signs, this argument failed.

4. Obiter dicta

In what amounts to an IP law seminar, the Grand Board addressed several additional absolute grounds:  

• Art. 7(1)(f) (public policy/morality): Registration of literary titles does not violate this provision. Seeking to commercialise a work without malevolent intent is "simply a natural corollary of the market economy".
• Art. 7(1)(d) (generic signs): The titles have not become generic terms for "books" themselves.
• Art. 7(1)(e)(iii) (substantial value): Word marks do not fall within the scope of this provision. In any case, literary titles cannot be considered a characteristic giving substantial value to goods.
• Art. 7(1)(g) (deceptiveness): The identity of the applicant is irrelevant to the examination.

Finally, the Grand Board expressly encouraged the EU legislator to consider whether an EU-wide sui generis right for work titles ought to be created.

Comment

The key takeaways:

1. As counterintuitive as it might seem at first, a sign’s fame can work against trade mark protection. Fame only means that the sign is well-known. It does not say whether it is known as a source indicator – which is the only thing that matters in trade mark law. 

2. The distinction between titles and trade marks should be taken with a grain of salt. The fact that a sign is perceived as the title of a work does not mean that it cannot also function as a trade mark. Just as a sign can be a company name and a trade mark at the same time (e.g. Apple), the title of a work can be an indication of origin and the (famous) name of a book. For instance, the CJEU held, inter alia, in Smart Technologies v OHIM (at para. 30) that a sign may be perceived at the same time as an advertising slogan and as a trade mark. Even if the advertising function is the primary one, the sign cannot be denied registration. Applied to titles: even if the relevant public perceives a sign primarily as a title of a book, it can also function as an indication of commercial origin.

3. Copyright protection is not decisive in assessing distinctiveness and non-descriptiveness. The fact that someone holds a monopoly over a sign does not confer distinctive character on it.
 

4. The Grand Board's math is: authorship does not equal source indication. Consumers distinguish between the author and the publisher of a book, only the latter being perceived as a source indicator. But is that really true? We have two sources: The author for the creative side and the publisher for the commercial side. But does the publisher actually play a role in the consumer’s perception? Did and do people buy Harry Potter and Lord of the Rings books because they have been printed by a specific publisher or do they buy them because they have been written by a particular author? At least in the case of famous book titles, which are attributed to a specific author, the book title – like the author’s name and the publisher’s brand – can indicate the commercial origin.
 

5. Get trade mark protection early. If you publish a book, the title should be protected as a trade mark before the book becomes a bestseller. Of course, this will not work with descriptive titles. 

 

6. If you wonder why the Grand Board did not take the easy way and argued that “ANIMAL FARM” must be refused because it can be perceived as a description of the content of non-fiction books etc. about animal farms, you should know that the Orwell Estate added the disclaimer “all of the aforesaid goods/services consisting of content on the subject of political fiction” to all classes. This excludes non-fiction content. However, the disclaimer does not work for “1984” because it can still be argued that this number is descriptive because it can be perceived as the year in which the book etc. was first published, the brand was established or the company responsible for the goods/services was founded.

The last word is probably not spoken. Maybe the General Court gets to write another chapter on the protection of titles.