Fictional characters and titles as European Union trademarks

Some fictional characters and titles are brands in themselves, so using them as word trademarks may seem a natural consequence of this. What if we would like to register the name of a well-known hero or the title of a book or movie as a European Union trademark?

The EUIPO website in an optimistic manner states that Alice in Wonderland, James Bond, Batman or Harry Potter, among others, have the status of EU trademarks. The Internet search engine recommends reading articles about last year’s success “Winnetou”, whose validity as a trademark was maintained by the verdict of the court.

However, these registrations were carried out over a decade ago and are currently only extended, and the case “Winnetou” (Case number: T-501/13) was settled on procedural issues (infringement of the basic principles of the EU trademark law by the Board of Appeal), rather than material ones. In the decision of 10 October 2016 on the “Anne of Green Gables”, we read clearly – we should not judge the ability to register on the basis of the earlier practice of the Office, as it has undergone significant changes since the time when the above mentioned marks were registered.

What is the current position ofEU authorities in relation to the registration of fictional characters and titles as EU trademarks, then?

Distinctive character – greater fame, bigger problem“Anne of Green Gables” (Application number: 015133374) and the “Jungle Book” (Case number: R 118/2014-1) were denied registration mainly on grounds of lack of distinctive character.

The requirement of distinctive character applies to all registered trademarks. It is related with their primary function – the indication of the origin of the merchandise or service.

EUIPO is of the opinion that some of the titles of literary works have become so widely recognized they can not be attributed to anything other than that contained in a particular story. These titles, being the names of fictional characters at the same time, “became a part of the language”, and are permanently associated with the stories. Consequently, as trademarks, they will not be able to fulfil their function of informing of the commercial origin of the goods or services in question, as consumers will cease to associate them with those stories.

Lack of distinctive ability will be all the more likely, the more theatrical, film and television adaptations have been created for a given story. It may be surprising that just before the registration of “Anne of Green Gables”, EUIPO registered the “Anne of Avonlea” trademark. When the applicant for “Anne of Green Gables” referred to a positive decision on “Anne of Avonlea” in its arguments, the office explained, however, that the circumstances of the case were different because “Anne of Avonlea” is a lesser-known novel from the first part of a series by Lucy Maud Montgomery. In addition, in continuation the writer did not introduce any new character, which would have gained the same fame as the Anne from the first book.

Descriptiveness – do not describe what you are selling

As a result of the decision of 25 February 2015 (Case number: R 1856/2013-2) Disney had to accept the revocation of the “Pinocchio” trademark for some goods and services (including recorded discs, compact discs, DVDs, prints, games and toys, theme parks). The reason was the descriptiveness of the trademark in this area.

Trademarks can not describe the content of goods and services covered by it. In the case of books, DVDs, television shows or theme parks, the character and the related story are the subject of the goods and services concerned, indicating their contents. Using them as trademarks would also be like reserving the word “candy” for candy sales – not only it would not provide any information about the origin of the merchandise, but rather of its contents, and would also risk the monopoly of the expression being appropriate for describing many goods on the market.

In the case of “Pinocchio” the applicant for the revocation argued againstthe monopolization in a different sense – the applicant claimed granting a trademark to a character so characteristic of the country’s tradition and folklore, in this case – Italy, would lead to an unjust misappropriation of the trademark by the trademark owner. In the applicant’s opinion Pinocchio, as a character of history known and important to all generations of Italians, should remain an expression accessible to all.

The Board of Appeals did not share its view. According to the Board, the monopolization does not include tradition in this sense, it is inseparably linked to the description of the expression – whenever it is stated the trademark does not describe the essential characteristics of a particular type of goods and services, there is no risk of monopolization. The issues of tradition are not the subject of the EUIPO’s deliberations, as they are not included in the grounds for refusal to register, as laid down in the rules governing the granting of protection to an EU trademark. The Pinocchio trademark was thus upheld in the remaining part.

The refusal to register  “Anne of Green Gables” and the“Jungle Book” trademarks, and the partial revocation of the “Pinocchio” trademark show the protection of known names of fictional characters and titles of works as new EU trademarks may face increasing obstacles, mainly due to the difficulties in determining the distinctive character and lack of descriptive character.

It is worth recalling that “Winnetou” was also originally revoked on the basis of these two conditions (the Board of Appeals even stated that it would be descriptive of food and transport services related to festivals). Entities wishing to sell their goods under the EU trademark, which is simultaneously a product of an author’s imagination, have a tough nut to crack.

* The author of the post was awarded in the competition for the best essay on intellectual property rights. The competition was organized jointly with the Student Government of the Faculty of Law at the University of Warsaw.