Can ‘famous’ beat ‘descriptive’?

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

The Diary of Anne Frank, published by her family over 60 years ago and translated into 67 languages, has been read by millions. Given the popularity of the book, the family foundation, which holds the rights to Anne's works, sought to protect the title of the book THE DIARY OF ANNE FRANK, as a trade mark in the UK and at CTM level for goods and services in classes 9, 16, 39 and 41 (DVDs, films, text books, educational purposes and showing of films amongst others). The UK IPO rejected the trade mark application on the basis that the trade mark was descriptive of the goods and services it sought to protect.

Famous people, fictional characters or titles of films or books have been accepted for registration by UKIPO previously (e.g. LAURA ASHLEY for various goods sold under the brand). Interestingly, ANNE FRANK was also accepted for goods similar to those covered by the mark considered in this article. However, one must be mindful that a trade mark must identify the origin of the goods and services offered under that mark and hence distinguish the goods and services of one undertaking from those of another. In the case of THE DIARY OF ANNE FRANK, registration was sought for various data media, books and magazines, theatre productions and others. The UK IPO concluded that the general public would not perceive the mark THE DIARY OF ANNE FRANK as anything more than a reference to the subject matter of the rejected goods and services, particularly given the book's fame. Similar outcomes were decided in relation to applications for trade marks ELVIS on the basis that "consumers purchase Elvis Presley merchandise not because it comes from a particular source but because it carries the name or image of Elvis Presley", or LINKIN PARK, which was also found descriptive in relation to the goods it sought to protect (e.g. posters).

The Foundation of Anne Frank attempted to argue that the mark had acquired distinctive character through use in the UK. In their arguments and evidence of acquired distinctiveness, the Foundation fell foul on the most important requirement which is to show that consumers identify THE DIARY OF ANNE FRANK as a trade mark denoting the commercial origin of its goods and services through extensive use of it. It is evident from this decision that the vast amount of evidence submitted by the Foundation, including impressive sales figures, articles acclaiming the work and extracts ranking THE DIARY OF ANNE FRANK as the top 10 book of 20th century, was insufficient proof of acquired distinctiveness.

In conclusion, if one wants to register a famous name, name of a book or film title, one must carefully consider whether the mark is descriptive of the characteristics of the goods and services. An application at CTM level may well be accepted even if a UK application is rejected, since OHIM can sometimes take a more relaxed approach to the issue of whether a mark is "wholly descriptive". One such example is just the CTM application for THE DIARY OF ANNE FRANK (for identical goods and services save for those of class 39). OHIM, unlike the UK IPO, did not object the application for being descriptive of the goods and services it seeks to protect or for lack of distinctiveness. The result is that the CTM application for THE DIARY OF ANNE FRANK will gain protection, including in the UK, unless it is blocked by a third party mark (and an opposition is successful).

If an application is rejected on the grounds of being descriptive of some or all the goods and services, an Applicant may be able to overcome the objection by filing evidence of acquired distinctiveness, but the threshold to be proven is significant, and the evidence must show, not just that consumers are aware of the mark, i.e. that it is "famous", but that they recognise the mark as an indicator of commercial origin of the goods and services applied for, something which can be difficult to show when the mark refers to a famous person.