In a decision that will resonate with intellectual property rights holders and bibliophiles alike, the EUIPO Grand Board of Appeal (the Grand Board) has rejected a trademark application for ‘George Orwell’ in case R 2248/2019-G for certain goods and services relating to literary content. The case establishes further precedent concerning the limits of trademark protection for famous literary figures with regard to books and other matters relating to literature and creative content.
Background
The estate of the late Sonia Brownell Orwell (Orwell’s wife) sought to register ‘George Orwell’ as an EU trademark for a variety of goods and services in classes 9, 16, 18, 21, 25, 28, 41, and 45 of the Nice Classification. The application was partially refused on absolute grounds, as the examiner considered the mark descriptive of and/or lacking distinctiveness in relation to classes 9, 16, and 41, covering audiovisual matter, printed materials, books, entertainment, and educational services. The estate appealed this finding.
In the meantime, the application was divided, allowing the mark to become registered in relation to various items of merchandise as well as political consultancy services in classes 18, 21, 25, 28, and 45. The divisional outcome illustrates the key principle that, for literary-related goods and services, consumers are considered to perceive a famous author’s name as descriptive of the subject matter; namely, books by or about the author. For unrelated products (e.g., bags, homeware, clothing, toys, political consultancy services), the name functions differently; it can serve as a distinctive brand identifier with no inherent descriptive meaning, successfully indicating commercial origin.
The irony of fame
The author’s profound influence on society is so significant that his surname spawned the adjective “Orwellian” and whilst the mark ‘George Orwell’ itself is not inherently generic, being associated with its own adjective did not help matters. Orwell is part of a select group of literary authors who are associated with eponymous adjectives (Shakespearean, Dickensian, Kafkaesque) – arguably it can be applied to any author’s name, but some are more significant than others.
In that vein, the Grand Board considered the following aspects in making a decision on the descriptiveness of the famous author’s name:
Fame and recognition of the author;
Widespread use of the work of the author;
Social and cultural integration;
The period for which the author has been known;
Nouns or adjectives that have been created from the name of the author; and
Market reality.
The Grand Board found that considering all these factors for the relevant public and for the goods and services in question, the name “George Orwell” would be immediately understood as referring to the celebrated author of 1984 and Animal Farm, “his writings or the ideas and themes deriving from them”, rather than indicating the commercial origin of goods or services. Consumers would perceive the sign as a reference to Orwell’s literature, not as a designation distinguishing one trader’s offerings from another.
Incidentally, the estate had similarly applied for trademark protection of 1984 and Animal Farm for similar goods and services. Both were rejected on similar grounds, divisional applications were created, and the appeal outcomes for those applications remain pending.
Copyright does not guarantee or preclude trademark rights
In this case, the estate advanced several arguments, including:
Copyright ownership does not preclude trademark registration; fame should not either;
Reference to the author’s name on a work allows consumers to distinguish authorised works from unauthorised ones; and
The name serves to advertise the work, show provenance, and guarantee origin and quality.
All the above are functions of a trademark.
Both sides agreed that book titles and authors’ names do not attract copyright protection per se; it is the literary work itself that is protected. Therefore, copyright does not inherently prevent unauthorised use of the title or name. The estate argued that authors should not be limited to copyright and moral rights; they should be afforded trademark protection as well. In this instance, the Grand Board disagreed.
One aspect highlighted by this case is that copyright and trademark law serve different purposes and operate on different timescales. Copyright protection, whilst powerful, is time-limited; in Europe, it generally expires 70 years after an author’s death, whereupon works enter the public domain. Trademarks, by contrast, can theoretically last forever through continued renewal.
There is a question around whether accepting the application would effectively extend intellectual property protection beyond copyright’s intended lifespan, which would be a misuse of trademark law. Trademarks exist to identify commercial source, not to indicate whether copyright permission has been obtained.
Practical implications for literary estates
This decision carries significant implications for literary estates and the families of deceased cultural icons. It clarifies that fame, whilst valuable, does not automatically translate into perpetual brand protection. Whilst authors’ names are not automatically unregistrable for books and films, widespread recognition and universal fame can render a name generic. Estates cannot rely upon trademark registration to extend control over a deceased author’s name in areas closely connected to their life’s work once copyright expires.
However, the decision does not close all doors. Strategic brand development in unrelated product categories remains viable, as demonstrated by the successful registrations in classes 18, 21, 25, 28, and 45, as well as the possibility of registering an author’s name by way of a signature (perhaps not in this case, where the application has been pending since 2021). Literary estates must think creatively, building distinctive brands that transcend mere name recognition whilst navigating the fundamental principle that trademark law cannot circumvent copyright’s temporal limitations.
