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INTA Files Two Amicus Briefs Concerning Trademark Protection of Names and Titles

07-Mar-2021 | Source : AG-IP News | Visits : 751
NEW YORK - The International Trademark Association (INTA) announced in a press release that it has filed two amicus briefs before the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) in three parallel cases brought by the Estate of the Late Sonia Brownell Orwell.

The cases concern the issue of whether (famous) names and titles (applications for GEORGE ORWELL, ANIMAL FARM and 1984) can be registered as trademarks for books, films, and certain services, or whether such marks should be considered descriptive of the content/subject matter of the goods/services claimed and therefore not able to function as trademarks.

The first case concerns the registrability of the name GEORGE ORWELL (case R 2248/2019-5), while the other two cases cover the trademark applications for “ANIMAL FARM” and “1984,” the titles of two books authored by George Orwell (cases R 1719/2019-5 and R 1922/2019-5).

According to the applicable laws and EUIPO Guidelines, names and titles can in principle function as trademarks. In its amicus briefs, INTA has argued that the names of famous authors and titles of famous literary and artistic works should not be excluded from trademark protection per se, or subject to special treatment that is more severe than that applied to other potential trademarks. INTA also noted that a case-by-case assessment should be carried out, taking into account all the circumstances of the case and that public perception  may vary over time.

INTA further argued that an author’s name or book title by their nature do not necessarily describe any kind of goods or services. The average consumer will not understand the name or title as being a generic term for “books” or any kind of “book,” unless (in exceptional circumstances when) the title is purely descriptive of the subject matter of the book. As stated in INTA’s brief, famous titles are not descriptive of any goods or services because of their fame per se; this would make all famous marks ineligible for registration after they have acquired reputation.

Read INTA’s amicus brief in the case concerning the registrability of the name GEORGE ORWELL, and INTA’s amicus brief in the cases covering the trademark applications of book titles “ANIMAL FARM” and “1984.”
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