The price of literary fame – EUIPO Grand Board refuses registration of “GEORGE ORWELL” as a trademark

1. Background

The Estate of the Late Sonia Brownell Orwell – the estate of George Orwell’s second and final wife – filed an application in March 2018 to register the word mark GEORGE ORWELL as an EUTM for a broad range of goods and services in Classes 9, 16, 28, and 41, including recorded media (Class 9), printed matter such as books, magazines and posters (Class 16), and entertainment, cultural, and educational services (Class 41).

In August 2019, the examiner partially refused the application under Articles 7(1)(b) and 7(1)(c) EUTMR, finding that the relevant English-speaking public would perceive the sign merely as an indication of the subject matter of the goods and services – i.e. that they are by or about George Orwell – rather than as an indicator of commercial origin. The applicant appealed.

Given diverging decisions within the Office and the Boards of Appeal on the registrability of names of well-known persons for content-oriented goods and services, the Fifth Board of Appeal referred the case to the Grand Board in July 2020. The International Trademark Association (INTA) submitted written observations, and the EUIPO Executive Director provided comments on questions of general interest.

2. The Grand Board’s assessment under Article 7(1)(c) EUTMR

The Grand Board confirmed that “subject matter” or “content” is a recognized subcategory of descriptiveness under the “other characteristics” limb of Article 7(1)(c) EUTMR. The Grand Board held that this type of objection can, in principle, only be applied to goods or services which contain information about other matters or refer to them – such as books, magazines, recordings, or training services.

Crucially, the Grand Board endorsed the view that marks consisting of names of famous persons may be perceived by the relevant public as describing the content of the goods and services at issue. A sign can simultaneously be famous for denoting a person and, depending on the nature of the product or service, be descriptive of the content or character of those goods or services.

To determine whether a famous author’s name is descriptive in this sense, the Grand Board identified the following non-exhaustive and non-cumulative criteria:

• fame and recognition of the author;
• widespread use of the author’s works (distribution, adaptations, inclusion in curricula);
• social and cultural integration (prizes, commemorations, street names, public events);
• period for which the author has been known, including persistence of fame long after death;
• derived nouns or adjectives created from the author’s name (e.g. “Orwellian”); and
• market reality (e.g. whether sections of bookshops or libraries are associated with the author).

Applying these criteria, the Grand Board found that “GEORGE ORWELL” would be immediately and unequivocally understood by the relevant public as referring to the well-known British author, and that the contested goods and services would be perceived as being by or about George Orwell, his writings, or the ideas and themes deriving from them. The sign was therefore descriptive for all contested goods and services.

3. The Grand Board’s assessment under Article 7(1)(b) EUTMR

Although the finding of descriptiveness was sufficient for refusal, the Grand Board also independently confirmed the mark’s lack of distinctiveness. The sign “GEORGE ORWELL” merely indicates to the relevant public that the goods and services concerned “comprise, concern, or are otherwise linked to the work, life, or personality of George Orwell.” It does not convey a distinctive trademark significance and is incapable of identifying a particular commercial origin.

4. Key principles established

a. No special treatment for famous names
In line with the positions of INTA and the Executive Director, the Grand Board confirmed that names of authors are not subject to any special or stricter treatment compared to other signs. They are not among the categories (such as slogans, shapes, or colors) for which it is considered more difficult to establish distinctive character. However, where the public perceives a name as designating subject matter rather than origin, the standard absolute grounds apply with full force.

b. Copyright and moral rights are irrelevant
The Grand Board emphasized that copyright and trademarks concern different exclusive rights based on distinct qualities. The existence or expiration of copyright in the author’s works is not a decisive factor in the trademark registrability analysis. Equally, the existence of moral rights – which are not harmonized at EU level – does not alter the assessment. Trademark law will not serve as a substitute for copyright or moral rights protection.

c. Identity of the applicant is irrelevant
The Grand Board confirmed that the identity of the applicant plays no role in the examination of absolute grounds under Article 7 EUTMR. The fact that the applicant is the estate of the author’s widow and administers their literary rights cannot be taken into account.

d. No application of Article 7(1)(e)(iii) EUTMR
The Grand Board held that registering the name of an author would not extend the life of other IP rights. It is the literary work itself – not the author’s name – that is protected by copyright. Therefore, Article 7(1)(e)(iii) EUTMR (exclusion for signs giving “substantial value” to the goods) was not applicable.

5. Comment and outlook

The GEORGE ORWELL decision is the first major ruling by the EUIPO Grand Board on the registrability of a famous author’s name as a trademark for content-oriented goods and services. It resolves – at least partially – the diverging practice within the Office that prompted the referral.

a. Structured framework with practical implications
The multi-factor framework now confirmed by the Grand Board provides a structured basis for future assessments. Practitioners and applicants should take note: the scope for securing EU trademark protection for famous names in relation to books, films, and cultural, entertainment, or educational services has narrowed. Where a name is likely to be understood as pointing to subject matter rather than commercial origin, registration will be refused.

b. Pending and future cases
The decision is unlikely to be the final word on this topic. Applications for “1984” and “ANIMAL FARM” remain pending before the EUIPO, and while it is difficult to forecast how those marks could receive different treatment under the framework now established, the outcome is not a foregone conclusion. Moreover, the present decision may yet be appealed to the General Court, which would provide the first judicial review of the Grand Board’s approach.

c. Trademark law is not a proxy for other IP rights
Probably the most important learning is the Grand Board’s clear message that trademark registrability turns on trademark function alone. Questions of copyright ownership, moral rights, or cultural stewardship – however legitimate – do not alter the assessment under Article 7 EUTMR. To state it in Orwell words: all signs are equal, but some signs are more descriptive than others.