A famous name is not always a strong trademark
Can the name of a famous author be registered as a trademark for books, publications, media and cultural services?
The EUIPO Grand Board of Appeal recently addressed this question in the ‘GEORGE ORWELL’ case and confirmed that the sign could not be registered as an EU trademark for a significant part of the goods and services applied for.
The decision is a useful reminder that, in trademark law, fame does not automatically equal distinctiveness. In some cases, fame can even become the reason why a sign is refused.
The issue: a famous author’s name as a trademark
The application concerned the word sign ‘GEORGE ORWELL’, filed for various goods and services including books, publications, recorded content, media, entertainment, education and cultural services.
The EUIPO refused the application for a substantial part of those goods and services. The issue was not the existence of earlier conflicting rights, but the way the relevant public would perceive the sign.
For goods and services such as books, publications, films, podcasts, educational content or cultural services, ‘GEORGE ORWELL’ is likely to be understood as a reference to the content, subject matter or theme of the goods and services (namely, works by, about, or inspired by George Orwell), rather than as an indication of their commercial origin.
Why the EUIPO considered the name descriptive
A trademark must allow consumers to identify the commercial origin of goods or services. It must function as a badge of origin.
The Grand Board confirmed that ‘GEORGE ORWELL’ was descriptive for the goods and services concerned because it could directly inform the public about an essential characteristic of those goods or services: their content or subject matter.
This is particularly relevant for cultural, educational and media-related goods and services, where the content itself is often central to the consumer’s choice.
As a result, the sign was refused on the ground of descriptiveness. Since a descriptive sign will generally not be perceived as a trademark, the application also failed for lack of distinctive character.
Public domain does not solve the issue
One of the interesting aspects of the decision is the relationship between copyright and trademark law: the fact that an author’s works may have entered the public domain does not automatically make the author’s name registrable as a trademark.
Copyright and trademark law serve different purposes. Copyright protects creative works for a limited period of time. Trademark law protects signs that distinguish the commercial origin of goods or services.
The expiry of copyright protection does not turn a culturally significant name into a distinctive trademark. If the public perceives the name as indicating content, subject matter or cultural reference, the sign may still be refused under trademark law.
Does this mean famous names can never be registered?
No. The decision does not create a general prohibition on registering famous personal names as trademarks; the assessment remains contextual. The key question is how the relevant public will perceive the sign in relation to the goods and services covered by the application.
A famous author’s name will be difficult to register for books, publications, films, podcasts, educational services or cultural activities. But the position may be different for goods or services with no direct connection to that person, their works, their field of activity or their cultural legacy.
The decisive question is therefore not simply: “Is this name famous?”, it is rather: “Will consumers perceive this name as a trademark, or merely as a reference to the content, theme or subject matter of the goods and services?”
Practical takeaways for brand owners
The ‘GEORGE ORWELL’ decision offers several useful lessons for applicants, rights holders, publishers, producers and cultural institutions.
1. Assess the link between the name and the goods or services
The closer the link between the famous name and the goods or services, the higher the risk of refusal.
Examples of potentially problematic filings include:
· the name of a writer for books, publications or educational services;
· the name of a musician for recordings or concerts;
· the name of an artist for exhibitions, catalogues or museum services;
· the name of a historical figure for documentaries, podcasts or cultural events.
In these situations, the public may see the name as describing the subject matter rather than indicating commercial origin.
2. Do not confuse legitimacy with registrability
Being the legitimate heir, estate, publisher or authorised manager of a cultural legacy does not automatically mean that the corresponding name can be registered as a trademark. Trademark law does not protect cultural legitimacy as such. It protects signs that function as indicators of origin.
A party may be fully entitled to manage or exploit a cultural legacy, while still facing difficulties in registering the relevant name as a trademark for content-related goods or services.
3. Build distinctiveness into the brand strategy
Where a famous name may be descriptive, applicants should consider alternative strategies, such as:
· combining the name with a distinctive word or logo;
· filing a more original sign linked to a specific project, collection, institution or label;
· narrowing the specification to goods or services for which the name is less descriptive;
· gathering evidence of trademark use, where acquired distinctiveness may be relevant;
· avoiding overly broad specifications that directly overlap with the cultural field for which the person is known.
4. Anticipate absolute grounds objections
For cultural, publishing, media, education and entertainment-related filings, clearance should not be limited to searches for earlier rights. Applicants should also assess the risk of absolute grounds objections, including descriptiveness and lack of distinctiveness.
This is particularly important where the sign consists of, or prominently includes, the name of an author, artist, historical figure, well-known work or cultural reference.
Conclusion: from famous name to protectable brand
The ‘GEORGE ORWELL’ decision confirms that famous names can be difficult to monopolise as trademarks when the public sees them primarily as cultural references. The decision does not prevent all trademark protection around famous names, but it does require applicants to think carefully about the function of the sign: a trademark is not simply a tool to reserve a famous name; it must operate as a sign of commercial origin.
For rights holders, publishers, media companies and cultural institutions, the lesson is clear: before filing a famous name as a trademark, it is essential to ask not only whether the name is available, but whether it will actually be perceived as a trademark for the goods and services concerned.
This does not mean that brand protection is out of reach. Rather, it means that the filing strategy must be carefully designed, for example by relying on more distinctive signs, specific project names, logos, labels or other brand elements that are capable of functioning as indicators of origin.
At IFORI, we assist clients in assessing the registrability of trademarks, identifying potential absolute grounds objections, and developing filing strategies that maximise the chances of obtaining meaningful protection. This includes advising on the choice of signs, the wording of goods and services, and alternative ways to protect brands connected to cultural, creative or media-related projects.
