All in a name: Why ‘George Orwell’ cannot be registered as a trademark

Following the EUIPO’s confirmation that the famous author’s name cannot be trademarked for certain goods and services, Paula Vener of Inventa examines how this decision was reached.

Registering the name of a famous author as a trademark raises a familiar clash. There is a legitimate commercial interest in licensing a name and stopping third parties from marketing ‘official’ goods that are not, in fact, authorised.

At the same time, EU trademark law is built around a narrower function. It protects signs that consumers use to identify commercial origin, and it refuses registration where the sign will be understood mainly as information about the goods or services, such as their content or subject matter.

Case R2248/2019‑G puts that tension in sharp focus and asks a direct question: in the markets at issue, does ‘GEORGE ORWELL’ operate as a trademark, or is it simply a cultural reference that describes what the product is about?

Outlines of the case

The estate of Sonia Brownell Orwell applied to register the word sign ‘GEORGE ORWELL’ as a European Union trademark (EUTM) for a wide range of goods and services, in particular in Classes 9, 16, 28 and 41.

The specification covered, among other goods and services, digital and audiovisual media, printed matter and publications including books, games, and educational and entertainment services.

At first instance, the EUIPO examiner refused the application on absolute grounds, considering the sign descriptive under Article 7(1)(c) EUTMR and lacking distinctive character under Article 7(1)(b) EUTMR.

The refusal was based on a simple market perception point. For a significant part of the relevant public, especially English-speaking consumers, ‘GEORGE ORWELL’ would be immediately recognised as the author’s name.

For many of the goods and services claimed, consumers would therefore read the sign as indicating subject matter or thematic content, meaning that the goods or services relate to the author or his works, rather than indicating a single commercial source.

Applicant’s appeal

On appeal, the applicant argued that the estate had a legitimate interest in protecting and licensing the name and in preventing unauthorised commercial exploitation. The applicant also referred to purportedly comparable registrations of famous names and maintained that notoriety should not, of itself, prevent registration.

In practical terms, the appeal sought to treat trademark registration as an appropriate mechanism for securing control over commercial uses of the author’s name across the classes applied for.

The Grand Board decision

The Grand Board’s reasoning can be summarised in three linked stages.

First, it identified the relevant public and the territories where consumer perception would be decisive for an EUTM.

Second, it assessed descriptiveness under Article 7(1)(c) EUTMR, focusing on whether the sign would be understood as describing characteristics of the goods and services, in particular their content or subject matter.

Third, it examined distinctive character under Article 7(1)(b) EUTMR, asking whether, in light of that perception, the sign could perform the essential origin-indicating function of a trademark.

Relevant public and determinative territories

The Grand Board identified the relevant public by reference to the goods and services concerned, many of which are directed to ordinary consumers and cultural audiences, such as readers, students, viewers, and users of educational and entertainment services.

It then emphasised the unitary nature of the EUTM. An EUTM must be registrable across the Union, and it is sufficient for refusal that an absolute ground applies in a substantial part of the EU.

On that basis, the Board placed particular emphasis on English-speaking consumers, and notably on Ireland, where the association between the name ‘George Orwell’ and the author is especially immediate.

Even if the association may be less strong in other linguistic areas, descriptiveness or non-distinctiveness in a substantial English-speaking territory was capable of defeating EU-wide protection.

Article 7(1)(c) EUTMR

Having identified the relevant public and the determinative territory, the Grand Board assessed whether ‘GEORGE ORWELL’ was descriptive within the meaning of Article 7(1)(c) EUTMR.

It considered that, for the types of goods and services claimed, especially those in class 16 (including books and printed matter) and Class 41 (education and entertainment), it is common in trade for a well-known author’s name to be used to indicate that goods and services are by, about, derived from, or thematically connected with that author and his works.

The Board therefore concluded that consumers would understand ‘GEORGE ORWELL’ primarily as information about the content, subject matter, or theme of the goods and services—not as an indication of which undertaking is responsible for producing or marketing them.

For books and closely related cultural offerings, the sign would function as a direct description of what is being offered, such as a biography, a critical work, an adaptation, educational material, or entertainment content themed around Orwell.

In the Board’s view, this immediate referential meaning brought the sign within Article 7(1)(c), because it could serve in trade to designate a characteristic of the goods and services that third parties may need to use legitimately.

Article 7(1)(b) EUTMR

The test here was whether the sign was capable of enabling the relevant public to identify the goods and services as originating from a particular undertaking and to distinguish them from those of others.

The Board’s conclusion followed naturally from the Article 7(1)(c) finding. If ‘GEORGE ORWELL’ is perceived primarily as a reference to the author and his oeuvre, it will not, without more, be perceived as an origin-indicating sign. The author’s fame did not assist; it strengthened the likelihood that the sign would be read in a purely referential way.

The Board therefore found the sign devoid of distinctive character for a substantial part of the claimed specification, including books and closely adjacent cultural, educational, and entertainment goods and services.

Possible outcomes

The Grand Board dismissed the appeal and upheld the refusal for a substantial portion of the goods and services claimed. It also made clear that arguments based on a legitimate interest in controlling exploitation of the name, or references to allegedly comparable prior registrations, cannot displace the absolute grounds analysis.

Registrability is determined by the sign’s objective capacity to function as a trademark for the goods and services claimed, as perceived by the relevant public in the relevant territories, rather than on the applicant’s asserted entitlement or on non-binding administrative outcomes in other matters.

In practical terms, the decision cautions cultural estates and other holders of well-known personal names that EU trademark law is not a route to perpetual control over a name in markets where that name will be understood primarily as a cultural reference or a descriptor of content.

At the same time, the refusal is not a blanket prohibition on registering famous names. Registrability remains dependent on whether, for the particular goods and services claimed, the sign is descriptive and or non-distinctive under Article 7 EUTMR.

This is reflected in the fact that EUTM No. 018903873 ‘GEORGE ORWELL’ was granted for Classes 18, 21, 25, 28 and 45, where the name is more likely to operate as an indicator of origin and less likely to be perceived merely as indicating subject matter.

Paula Vener is an attorney at law at Inventa, and can be contacted at pvener@inventa.com