The EUIPO Grand Board of Appeal has upheld a decision that the book titles ANIMAL FARM and 1984 should be refused for being descriptive of certain goods and services.

On 6 March 2018, the Estate of the late Sonia Bronwell Orwell filed an application to register the word mark ANIMAL FARM for goods and services in classes including 9, 16, 28 and 41. On the same date, the Estate filed an application to register 1984 for goods and services in classes including 9, 16 and 24.

The relevant goods and services cover audio video, magnetic and digital carriers, books, printed matter, toys and games, education and entertainment-related services.

In June and July 2019, the applications were partially refused under Article 7(1)(b) and (c) of the EU Trade Mark Regulation because they described certain characteristics of the goods and services for which protection was sought, and were also devoid of any distinctive character.

The Estate appealed both decisions. In decisions of June and July 2020, the Fifth Board of Appeal referred the cases to the Grand Board, citing diverging decisions on the registrability of titles of books or names of well-known characters.

Shortly after that, ANIMAL FARM was registered for goods and services in classes 18, 21, 25 and 45 and 1984 was registered for goods and services in classes 18, 21, 25, 28 and 45.

Grand Board reasoning

In its decision, published on 27 May, the Grand Board concluded that the signs applied for were descriptive for all the goods and services applied for in classes 9, 16, 28 and 41, because a significant part of the relevant public would immediately recognise ANIMAL FARM and 1984 as the titles of George Orwell’s novels. They would therefore perceive those signs, at first sight and without further cognitive steps, as designating the subject matter of the relevant goods and services.

The Grand Board found that the relevant public primarily rely on titles and authors to identify and select artistic works but rely on publishers or other trade indicators to identify the commercial origin of the relevant goods and services, stating:

When used in relation to goods and services whose nature is to contain or provide expressive content, a work title will be perceived first and foremost as identifying the work itself, rather than as indicating that the goods or services originate from one undertaking. In the absence of evidence that the relevant public has been educated through use to perceive the work titles as badges of origin, the signs cannot fulfil the essential origin function of a trade mark.

It further explained that the difficulty in registering titles of famous works as trade marks arises from the fundamentally different functions performed by titles of artistic works and trade marks, stating:

Whereas a trade mark serves to identify the commercial origin of goods or services, the title of a work serves primarily to designate and distinguish the work itself. In the absence of any established market practice whereby the title of a single work is used as an indicator of the undertaking responsible for the goods or services, the relevant public is not accustomed to perceiving such titles as badges of origin.

The Grand Board concluded that the relevant public would understand the signs ANIMAL FARM and 1984 as descriptive and non-distinctive indications in relation to the content or subject matter of the goods and therefore devoid of distinctive character.

Titles of artistic works

The Grand Board said that for titles of literary works to be registered as trade marks they must have distinctive character, adding:

The decisive question is whether a sign consisting of the title of a literary work, when used in relation to goods and services such as books, printed matter, digital data carriers, education and entertainment services, would be perceived by the relevant public not merely as designating the work itself, but primarily as an indication of the commercial origin of those goods or services. In other words, it must be determined whether such a sign is capable of fulfilling the essential function of a trade mark, namely to distinguish the goods or services of one undertaking from those of other undertakings.

In this case, it said, the Estate had not put forward any evidence showing that the relevant public perceived a connection between the marks applied for and a specific commercial undertaking. Nor was there any indication that the existence of copyright had determined or materially influenced the perception of the signs by the relevant public.

Finally, the Grand Board encouraged the EU legislator to consider whether an EU-wide right for titles of works should be created, to address the legitimate interests in protecting them.

The full decision (reference R1719/2019-G) can be found on EUIPO’s website here. The Estate can appeal the decision to the EU General Court.