The long-awaited decision of the Grand Board of Appeal addressed a question that frequently arises in practice: can the name of a well-known author function as an EUTM for goods and services capable of carrying content? In the case GEORGE ORWELL (R 2248/2019-G), the Grand Board confirmed the refusal to register the mark for a broad range of goods and services in Classes 9, 16, and 41 (recorded/digital media, printed matter, and entertainment/education-related services).
This decision does not support the proposition that famous names cannot be registered as trademarks in general. Rather, it clarifies the circumstances under which the name of a well-known person may be considered descriptive of the subject matter of the relevant goods and services. The significance of this decision lies in the Grand Board’s formulation of the “subject matter” analysis under Article 7(1)(c) EUTMR for names of famous individuals, effectively establishing a practical test: if the relevant public immediately understands the sign as describing what the goods and services are about (or what they contain), the sign is descriptive and therefore also lacks distinctive character.
Particular attention should be paid to the non-exhaustive set of parameters identified by the Grand Board for assessing whether a famous name will be perceived as indicating subject matter: fame and recognition; widespread dissemination and adaptation of works; social and cultural integration (awards, institutions, commemorations); the length of time during which the author has been known and remains present in public discourse; linguistic derivatives (such as “Orwellian”); and market reality (how libraries/bookstores and audiences actually classify and search for such materials). On this basis, the Grand Board found that “GEORGE ORWELL” would be perceived, at least by the English-speaking public in Ireland and Malta, as a direct reference to the author, and for the goods and services at issue, as an indication that they relate to Orwell.
Two additional points are worth highlighting. First, copyright status is not decisive: the existence or expiry of copyright is not determinative for the assessment under Article 7 EUTMR. Second, the identity of the applicant and their entitlement are not relevant factors in the assessment of absolute grounds: the decision is based on consumer perception of the sign in relation to the specified goods and services, not on who filed the application or who controls the estate.
In practice, this decision clarifies the EUIPO’s approach to authors’ names (and potentially other cultural figures) where the specification covers media, publications, and cultural or educational services. It refines how descriptiveness of “subject matter” is assessed when the sign consists of a globally well-known name.
Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.
