We begin the year by commenting on the latest decision issued by the EUIPO Grand Board of Appeal in relation to the case concerning the trademark “GEORGE ORWELL” in Classes 9, 16, 28 and 41.
In the opinion of the EUIPO examiner, the trade mark application lacked distinctive character and was descriptive in relation to some of the goods in Classes 9, 16 and 41, since the average consumer in the European Union, and in particular those who speak and understand the English language, would associate the mark with the famous writer GEORGE ORWELL.
Following the confirmation of the refusal of the mark by the examiner, the trademark applicant, The Estate of the Late Sonia Brownell Orwell, the second wife of the writer and the entity responsible for administering his estate, filed an appeal before the EUIPO Board of Appeal. After the corresponding exchange of pleadings between the applicant and the Board, it was decided to refer the case to the Grand Board. In these proceedings, observations were also submitted by INTA and by the Executive Director of the EUIPO.
As regards the substance of the case, and after considering admissible evidence submitted at this stage by the applicant, the Grand Board examined whether the conditions for the application of Article 7(1)(c) EUTMR concerning the descriptive character of the mark were met. The Grand Board found that the consumers of the refused goods would be professionals and the general public, in particular the Irish and Maltese public, since, for historical, linguistic and cultural reasons, that part of the European Union has closer connections with the United Kingdom. Consequently, the Grand Board concluded that the applied-for mark would be perceived by the relevant public as the name of the British author George Orwell.
Likewise, the Grand Board took into account the fact that the works of such a distinguished writer were protected by copyright at the time the application was filed, on 6 March 2018, rights which expired in the European Union in January 2020. Although those rights subsist in the literary works and not in the author’s name, the Grand Board recalled that the author enjoys moral rights. However, it must be borne in mind that the existence of copyright is not, in itself, a sufficient justification for granting the author perpetual trademark rights (decision of 15 May 2018, Case R 2382/2017-2, SIBELIUS).
As rightly stated by the Executive Director, copyright and registered trademarks concern different exclusive rights based on different qualities, namely, on the one hand, the original nature of a creation, and on the other hand, the ability of a sign to distinguish the commercial origin of goods and services. It is the perception of the relevant consumer of the mark that is of paramount importance when assessing whether it serves to distinguish commercial origin. The Grand Board shares the view of the Executive Director that trademarks consisting of the names of famous persons may be perceived by the relevant public as descriptive of the content (subject matter) of the goods and services covered by the trade mark application. A sign may be famous by denoting someone or something and, depending on the nature of the goods or services concerned, be descriptive of their content or characteristics in relation to which it is used.
As regards the applicability of Article 7(1)(b) EUTMR concerning the distinctive character of the mark, the Grand Board concluded that the mark lacks distinctive character not only because it is descriptive, but also because it reproduces the name of the famous British author GEORGE ORWELL and merely indicates to the relevant public that the goods and services concerned
comprise, relate to, or are otherwise linked to the work, life or personality of George Orwell, rather than serving as an indication of commercial origin.
Finally, the decision makes reference to other possible grounds for refusal of the application, such as the deceptive character of the mark or the fact that the mark consists exclusively of a shape or another characteristic which gives substantial value to the goods or services.
Noelia Gutiérrez
Trademark Attorney
