EUIPO BOARD OF APPEAL REFERRED THE "GEORGE ORWELL", "1984" AND "ANIMAL FARM" REFUSALS TO THE GRAND BOARD
Famous author George Orwell (real name Eric Arthur Blair), who has lived between the years 1903 and 1950, is well-known both in Turkey and in the world mostly with his works named 1984 and Animal Farm.
Being one of the masterpieces of anti-utopian style and probably the most well-known work of that style, 1984 is acquiring currency year after year parallel to the increasing control on our daily lives through the developing technologies.
Animal Farm is one of the most important works of political satire style and is a strong criticism of Stalinism for that period. Everyone knowing the 20th century political history more or less may easily identify the heroes of the farm and even the animal species taking part in the novel with a specific identity or entity in the history.
There are many things to say about George Orwell and his works, and undoubtedly, to express our admiration for them, but that is not the point, nor the purpose of this article is to introduce George Orwell and his works.
"The Estate of the Late Sonia Brownell Orwell" (hereinafter to be shortly referred to as the "applicant"), i.e. the entity managing the estate of Sonia Orwell, late wife of George Orwell, who has died in 1980, files three separate applications to the European Union Intellectual Property Office (EUIPO) on 6 March 2018 in order to have "GEORGE ORWELL", "1984" and "ANIMAL FARM" word marks registered.
All of the applications cover inter alia the following goods and services included in classes 9, 16 and 41: "electronic, magnetic and digital record carriers, digital media and recordings, electronic publications, computer games, motion pictures, sound and video recordings; printed matter, books, magazines, newspapers, posters, instructional and teaching materials, drawings, paintings; educational, entertainment and cultural activities and services provided through entertainment, educational and cultural activities, online entertainment services, electronic media, video, cinema, TV programs, etc.." In addition, "ANIMAL FARM" application also covers such goods as "games, toys and electronic games" included in class 28.
At this point, one of the matters we would like to draw your attention is that as of March 2018, i.e. the date of filing of applications, the period of 70 years has not yet passed over the date of death of George Orwell, and therefore, his works were still under copyright protection in many European Union countries, just like Turkey. The period of 70 years added to the date of death of the author has now just passed in the current year 2021, and Orwell's works have thus become public in many countries of the world. In our opinion, this point will give an idea to our readers about the purpose and timing of the related applications for registration.
EUIPO Decisions and Their Reasons
EUIPO has partially refused all three applications on the grounds of lack of distinctive character and descriptiveness in terms of the goods and services listed above.
Reasons of the partial refusals may be summarized as follows:
- GEORGE ORWELL application: Although names of authors are not exclusively non-registrable for books and movies, George Orwell is a very famous author who died in the year 1950. Besides his very famous works such as 1984 and Animal Farm accepted as worldwide classics, he also has some other novels and books such as essays, memories and political comments. He is not an author well-known with only one single book (for example like Anne Frank), but one of the most important literary figures of the 20th century. That is why GEORGE ORWELL name will not create a distinctive trade mark perception in the minds of consumers as for the goods and services covered by the refusal, but will be perceived as a descriptive sign indicating that they come from or are related to GEORGE ORWELL. Decisions already taken about works of authors who earn reputation by a single work (for example, Diary of Anne Frank) cannot be set a precedent for the application in concern; but "SIBELIUS" decision may be taken as a precedent. The existence of copyright is not a legitimate reason for provision of a trademark right lasting forever.
- 1984 and ANIMAL FARM applications: Both of these applications are names of very famous artworks (novels), and for this reason, will be perceived as names of artworks, not as word marks designating commercial sources to public as for the goods and services covered by the partial refusal. Some stories or their names become so much known in the course of time to such extent that they become a part of the daily language due to their thematic significance independently from the contents of the book they are published in. That is why the expression 1984 is now associated to some certain concepts instantly even by those who have not ever read the book, and what's more, some concepts used in the book has penetrated into the daily language. EUIPO has so far accepted to register some book names, but has on the other hand rejected some others (THE JUNGLE BOOK, PINOCCHIO). 1984 and ANIMAL FARM are also believed to be in the category unregistrable ones, and therefore, the registered examples are not acceptable as a precedent thereinfor. And the existence of copyright on the works will not affect the basis of the absolute grounds for refusal found therein. In addition to these factors, ANIMAL FARM word mark has further been found to be descriptive in terms of its meaning as for the goods covered by class 28.
Appeal against the Contested Decisions, and Interim Decisions of the Board of Appeal
The applicant filed appeals against all three decisions of partial refusal, and all of its appeals were referred to EUIPO Fifth Board of Appeal.
EUIPO Fifth Board of Appeal sent a communication to the applicant declaring some additional reasons of refusal as for 1984 and ANIMAL FARM word marks, and requested the statements of the applicant in relation therewith:
- "1984" may be perceived by a great part of the consumers in the European Union as an indication of a year in the context of contents or subject of the goods and services covered by the application (like an activity or event which has occurred in the related year). In this aspect, it is also not necessary to note that a very important or attention-grabbing event has occurred in the year 1984, or the public has become aware of this very specific event. This means to say that the indication of a certain time frame (in our case, the year 1984) is even alone adequate to make this registration application a descriptive one.
- A search on the term "ANIMAL FARM" has revealed that this expression is a popular and well-known term in publications, games, entertainment and education sectors. There are a great many of games or toys focused on farms or animals as main theme or subject matter. Thus, in addition to being the title of a famous work in respect of the goods and services covered by the partial refusal, it refers to a well-known and classical subject, and even this fact alone means that the application is descriptive.
The applicant filed the following arguments and statements in its appeals to the initial decisions and additional communications of the Board:
- GEORGE ORWELL application: GEORGE ORWELL word mark is being used and controlled by the applicant as a sign ensuring that the original works of the author are easily recognized and known by the consumers. Thus, purchasers easily understand that the works come from the author or from commercial enterprises that are economically related to him. Commercial documents and certificates, and information about Orwell Foundation and Orwell Awards, and examples of licensed use of George Orwell titles are attached to the appeals. The application shows similarity not to the decision about "SIBELIUS" mark being the name of a composer and covering different services, but to "Le Journal de Anne Frank" mark, and that decision should be used as a precedent hereinfor. Names of some other famous authors such as F. SCOTT FITZGERALD, IAN FLEMING, and ALBERT CAMUS have also been registered.
- 1984 application: Trademarks composed exclusively of numerals with no graphic modifications and which are also a "year" may also be registered, and a great many of trademarks indicating a year have so far been registered by EUIPO. The year 1984 does not indicate any information or feature in respect of the goods and services covered by the partial refusal. The fact that consumers are aware of the style or nature of a best seller book does not ever mean that the title of that book cannot be a trademark. If so, none of the fairly popular book titles could ever be registered as a trademark. In addition, there is a difference between simple fables such as "PINOCCHIO" and "THE JUNGLE BOOK" on one side and more complex stories on the other side. Furthermore, some other more famous and well-known titles such as "LORD OF THE RINGS", "LE PETIT PRINCE" and "THEN THERE WERE NONE" have already been registered as trademarks. The applicant has so far kept the adaptations of 1984 under control, thereby assuring loyalty to the original title. The figure 1984 does not refer to a book style or to a style of other goods and services covered by the application, but refers to a product or service offered or used under control of the applicant. Thus, it serves the functions of a trademark. Finally, in order to eliminate the counter-arguments that may probably be raised against indication of a year by 1984, the applicant has requested the deletion of "calendars" from the list of goods, and the addition of the of "all relating to political and/or societal fictional artistic work" at the end of each class refused. Concerning the additional reasoning of refusal, it is also mentioned that evidence for acquired distinctiveness through use may also be presented if requested by the Office.
- ANIMAL FARM application: As a matter of fact, the arguments contained in the appeal as to 1984 have been repeated, and it is argued that the application is not descriptive in respect of the goods included in class 28, and the addition of the phrases of "none relating to toy farms" and as a positive alternative: "all relating to political and/or societal fictional artistic works". Concerning the additional reasoning of refusal, it is also specified that evidence for acquired distinctiveness through use may also be presented.
At this stage, the Board of Appeal started to examine the appeals.
During its examination, the Board determined the existence of a great many of contradictory decisions taken by EUIPO and its Boards of Appeal about the eligibility for registration of names of famous people, titles of famous books or famous characters contained in books in terms of goods and services, such as motion pictures, videos, printed matter, photographs, books and paintings, and goods such as games, toys and toy figures, and entertainment, cultural and educational services. In some of these decisions, the related person, character or title names have been registered either directly by EUIPO or through the annulment of the refusal by the Boards of Appeal, while in some others, their registration has been refused due to the reasons of being descriptive and devoid of distinctive character.
In the light of these, the Fifth Board of Appeal has referred all three appeals to the Grand Board, and has requested an assessment as to whether "GEORGE ORWELL", "1984", and "ANIMAL FARM" are distinctive and descriptive in terms of the goods and services covered by the partial refusals or not. The interim decisions of the Fifth Board of Appeal can be reached at the following links: GEORGE ORWELL, 1984, ANIMAL FARM.
Let us say and note that the Grand Board is a type of higher board composed of nine members and dealing with issues and debates which cannot easily be resolved, or are found important, or are found to be the subject of diverging decisions, by the Boards of Appeal.
I, both due to my special interest in the subject matter, and as a fan of the author and his novels, will also await impatiently the decisions to be taken by the Grand Board about "GEORGE ORWELL", "1984", and "ANIMAL FARM".
Situation and Practice in Turkey
Finally, let us discuss how such and similar other issues are assessed by the Turkish Patent and Trademark Office.
Pursuant to provisions of subparagraph (b) of article 5(1) of the Industrial Property Law no. 6769, signs that do not have any distinctive character cannot be registered as a trademark. In addition, subparagraph (g) of article 5(1) of the Law provides that ". signs which are of particular historical and cultural interest to the public cannot be registered as a trademark."
The Office's examination guideline regulating how these law provisions will be evaluated and assessed by the Office contains the following statements about well-known book names and titles: "Marks solely containing the title of name of a well-known story or book are not deemed to be distinctive for the goods or services that may constitute the subject matter of said story or book. The departure point here is that such stories or books have already entered into the daily language as a result of existing and being known since a fairly long period of time, and therefore, they are not adequate to lead to any perception beyond the name of subject story or book. For refusal of such applications for registration, the subject sign must refer to the name of a book/story having an adequate level of recognition by the relevant consumer segment, and the goods or services covered by the application must be goods or services that may refer to their subject matter (such as printed matter, cinema films , TV - theatre shows). However, names of books/stories which are already under copyright protection will not be considered as a part of this assessment."
In the light of this assessment, it is not difficult to predict that probable applications for registration of 1984 and Animal Farm, which are among best seller books / classics also in Turkey, will be refused in respect of goods and services such as printed matter, cinema films, TV and theatre shows. However, the condition precedent of this assessment is that the related title should not be under copyright protection as determined and stated by the Office itself. In our opinion, this condition is questionable and open to debate. Though it is unequivocal that a work can become a classic or its name can enter into daily language only if and when some time passes over its date of publishing, we believe that the determination of this fact does not have any relevance with the subject work's being under copyright protection or not.
As for the names of famous authors, the Office's examination guideline contains the following comments: "Names and photographs of famous Turkish characters who have already become public in terms of historical or cultural values, and names of artists and authors who address to a great segment of the community and are widely known and acclaimed are considered within this criterion. However, names of famous alive artists, sports people, authors, actors or actresses are not considered within this scope."
The same guideline also contains such a statement: "However, it must also be stated that with respect to applications containing names of people to whom historical or cultural values are attributed, applications filed by the related person, entity or institution itself with regard to that personality are not considered in this direction."
In the light of the details cited in the preceding paragraphs, it may be said that in order for an application comprised of name of a famous author to be accepted by the Office as a cultural value and to be refused therefor, the related author must have died. However, applications filed by persons, entities or institutions related to that famous person will not be rejected.
In our opinion, this condition of being dead is problematic and disputable. That is to say, an author may already have of course become a cultural value while he is still alive, to the extent of his achievements and of his acceptance by the community. The comment as to non-rejection of applications filed by persons or entities related to the famous person is, according to us, very appropriate and correct.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.