In the busy world of European trade mark law and practice, Class 46 rarely has an opportunity to delve beneath the surface and provide a close, careful analysis of any of the many decisions that come to our attention.  However, the following piece, sent to us by Mary Knowles, has given a good deal of food for thought on an OHIM Board of Appeal ruling that many readers may find surprising.  It is not known at this stage whether the decision is under appeal.

The piece we have received reads like this:

We need to talk about Anne: the monopolisation of a universal cultural heroine

It is commendable to question easy assumptions and accepted opinion. It was presumably this impulse to challenge what the rest of us take to be established fact that seized the Fourth Board of Appeal of OHIM when writing Decision R 2401/2014-4 Le Journal D´Anne Frank, and inspired the three members who put their names to it. But in the enterprise of debunking commonly held beliefs, one must be careful not to express a view which, in Macaulay’s words, is ‘all sail and no anchor’.

The case concerns an application to register the sign ‘Le Journal D´Anne Frank’ as an international trade mark with effect in the European Union. The goods and services concerned are in Classes 9, 16 and 41, which includes films, electronic publications, printed matter, newspapers, books, putting on plays, and guided tours with cultural and educational purposes. The applicant is the Anne Frank Fonds non-profit organisation, which owns the copyright for a book that was originally written in Dutch and first published in English in 1957 under the title Anne Frank: The Diary of a Young Girl.

The appeal decision overturned a decision from OHIM’s examination department. In refusing to register the sign ‘Le Journal D´Anne Frank’, the examiner (citing the OHIM Guidelines) stated the following (translation from French):

‘Trade marks consisting solely of a famous story or book title may be non-distinctive under Article 7(1)(b) in relation to goods and services which could have that story as their subject matter. The reason for this is that certain stories (or their titles) have become so long established and well known that they have “entered into the language” and are incapable of being ascribed any meaning other than that of a particular story.’

The reasoning in Decision R 2401/2014-4 begins unpromisingly at paragraph 26, with the Board confidently asserting that ‘the term “Anne Frank” describes nothing and has no meaning’. This must have come as a bit of a surprise to the applicant, which is an educational organisation dedicated to the memory of Anne Frank. On their web site they state ‘Through her diary, ANNE FRANK has become a worldwide symbol representing the victims of racism, anti-Semitism and fascism’.   

The Benelux Intellectual Property Organisation, which ought to know a thing or two about Anne Frank and trade marks, will also get a shock, since it refused the registration of ‘HET DAGBOECK VAN ANNE FRANK’ in 2011, on much the same basis as the OHIM examiner refused to register ‘Le Journal D´Anne Frank’.

The Brussels Court of Appeal, in upholding the decision, had the following to say:

‘When faced with the sign Het dagboek van Anne Frank affixed to the goods for which registration is sought or designating the services offered, the consumer concerned will immediately perceive it as the title of Anne Frank’s work, which is known all over the world, incorporated into a book, a dvd or any other physical medium or the subject of a theatre production or exhibition, but not as indicating the undertaking offering such goods and services.’ 

UNESCO might also take alarm at the OHIM Board of Appeal’s decision because in 2009 UNESCO reported that Anne Frank’s Diary was ‘one of the top 10 most read books worldwide’.

Apart from this difference in perception regarding the fame of Anne Frank’s Diary, between the Fourth Board of Appeal and the rest of the world, there is the small legal matter of copyright. In principle, copyright in the diary of Anne Frank expires at midnight on 31 December this year in the European Union. Copyright in the diaries is owned by the Anne Frank Fonds, to which it was transferred by Anne's father Otto Frank. After the expiry of the copyright, anyone will be free to publish an edition of the diary, for which purpose they will probably wish to give it the somewhat descriptive title `Anne Frank's Diary´ or `The Diary of Anne Frank´.

Copyright has historically proven a difficult subject for lawmakers to get right. Mark Twain declared that ‘Only one thing is impossible for God: To find any sense in any copyright law on the planet’. Nevertheless, it ought to be obvious that copyright cannot be extended indefinitely by the expedient of registering a book title as a trade mark. Could J.D. Salinger's successors in title register The Catcher in the Rye as a trade mark for goods and services in Classes 9, 16 and 41? Surely not.

In paragraph 34 the Board states:

‘…there is no need to consider whether registration as a trade mark would be incompatible with protection by copyright. Indeed, copyright attached to a literary work (identified by its title) is not affected by the registration of a Community trade mark (see Article 53, paragraph 2, point c) CTMR) or the international registration designating the European Union.’

The Board seems to have missed the point. Article 53(2)(c) CTMR concerns situations where the owner of a copyright can challenge the validity of a Community trade mark registration, based on copyright. But what happens when the copyright expires? The right to invalidate the Community trade mark expires with it. This is precisely why the owner of a copyright that is about to expire might be tempted to extend the life of the copyright by means of a trade mark registration.

The Brussels Court of Appeal succinctly summed up the point as follows:

‘…the copyrights held by the Anne Frank Fonds will expire in the near future and the work, which is already part of humanity’s cultural heritage, will shortly enter the public domain. If registration of the sign were ordered, that would therefore have the consequence of giving the Anne Frank Fronds a de facto perpetual monopoly in that work (subject to renewal), thereby preventing any economic operator from still publishing the work under its original title. But one of the purposes of refusing registration of a mark may be to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the legislature has sought to make subject to limited periods (Opinion of Advocate General Ruiz-Jarabo Colomer, Philips, C-299/99, point 30). It is in fact unacceptable that a creation of the mind, which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity which not even its author’s estate enjoys (Opinion of Advocate General Ruiz-Jarabo Colomer, Shield Mark C-293/01/point 52).’

Judging from a report in the Guardian newspaper from 25 November 2015, under the headline ‘Challengers vow to publish Anne Frank diaries as foundation moves to keep control of copyright,’ some publishers will not respect any trade mark right obtained by the Anne Frank Fonds organisation. The report states: 

‘A French MP and an academic are set to defy an attempt by the Anne Frank Fonds to keep control of the copyright on Anne Frank’s diary by publishing online texts of the world famous second world war account from one of the Holocaust’s most recognisable victims.’

Regardless of the incongruity of allowing a trade mark registration to confer perpetual copyright, there is nothing distinctive about a well-known book title, a point well understood by the OHIM examiner who took the first instance decision. A book title is not a trade mark. If one follows the logic of this decision, anyone could register The Pilgrim's Progress or Oliver Twist as trade marks for books and films.

It is difficult to imagine this decision will stand the test of time and scrutiny, since it clashes head on with common sense, common knowledge and OHIM´s own guidelines. The Board´s decision is calamitously muddled, and one which is more difficult to read than it must have been to write.