{"id":25321,"date":"2026-01-29T08:35:48","date_gmt":"2026-01-29T08:35:48","guid":{"rendered":"https:\/\/ponsip.com\/ip-case-law\/famous-names-as-trademarks-euipo-reopens-debate-with-george-orwell-case\/"},"modified":"2026-01-29T08:38:10","modified_gmt":"2026-01-29T08:38:10","slug":"famous-names-as-trademarks-euipo-reopens-debate-with-george-orwell-case","status":"publish","type":"ip-law","link":"https:\/\/ponsip.com\/en\/ip-case-law\/famous-names-as-trademarks-euipo-reopens-debate-with-george-orwell-case\/","title":{"rendered":"Famous names as trademarks: EUIPO reopens debate with \u201cGEORGE ORWELL\u201d case"},"content":{"rendered":"\n

Daniel Basa\u00f1ez Bordas. <\/strong>Consultant | Trademarks & Brand Intelligence Area<\/p>\n\n

Can the names of historical figures, famous authors or prominent personalities be registered as trademarks? This is the substantive issue under consideration in the Grand Board of Appeal\u2019s decision of 19 December 2025, partially refusing the word mark \u2018GEORGE ORWELL\u2019, applied for by the body managing the estate of Sonia Brownell Orwell (The Estate of the Late Sonia Brownell Orwell)<\/em> and administering the legacy of Eric Arthur Blair, more commonly known by his pseudonym George Orwell. <\/p>\n\n

The decision, which is not without controversy, raises an issue that is more complex than it might appear at first sight. We know for certain that peoples\u2019 names can be registered as trade marks and be considered distinctive, even in the case of the most common surnames such as \u201cGarcia\u201d or \u201cJones\u201d. Even the names of prominent personalities, such as the name of a head of state, may be perfectly registered as a trade mark. <\/p>\n\n

However, there are some nuances: for example, in relation to common names, access to registration could be refused where the name could also be perceived as a non-distinctive term in relation to the goods or services concerned (e.g. \u201cTailor\u201d for tailoring services). In this context, the names of famous people (in particular, artists, writers, musicians or composers) may indicate the category of the goods \u2014 and consequently be considered descriptive and not distinctive \u2014 if, as a result of their widespread use, the passage of time, their popularisation, recognition or other similar factors, the public perceives them as generic names. <\/p>\n\n

For example, the terms \u201cShakespeare\u201d, \u201cHitchcock\u201d or \u201cGeorge Orwell\u201d are perfectly capable of constituting distinctive trade marks in relation to goods such as paints, clothing or pencils. However, they lack the capacity to play a distinctive role in relation to, inter alia, products such as books or films. At least this has been the criterion of the Grand Board of Appeal in the latest chapter of this long story. <\/p>\n\n

However, the more astute may say that the Decision of 15 May 2018 (R 2382\/2017-2) \u201cSIBELIUS\u201d was a spoiler of this last chapter, as the EUIPO\u2019s Second Board of Appeal ruled that the trade mark \u201cSIBELIUS\u201d applied for would be perceived by the EU public as the surname of the famous Finnish composer Jean Sibelius. This decision, used by the Grand Board of Appeal in support of the refusal of the GEORGE ORWELL trade mark, held that \u2018Sibelius\u2019 was a descriptive term devoid of distinctive character for some of the goods and services applied for, inter alia,<\/em> music-related services or even for the broader category of entertainment services. <\/p>\n\n

Regarding the content of the decision of 19 December, the Grand Chamber refused, on the basis of Articles 7(1)(c) (descriptive character) and 7(1)(b) (lack of distinctive character) of the European Union Trade Mark Regulation (EUTMR), the trade mark GEORGE ORWELL for goods and services in Classes 9, 16 and 41 (among others, the following can be mentioned): DVDs, podcasts, films, cartoons, photographs, books, printed matter, magazines, newspapers, entertainment, cultural activities, educational services, etc.).<\/em><\/p>\n\n

As for the application of Article 7(1)(c), relating to the descriptiveness of a trade mark as a ground for refusal, the Grand Chamber noted that the fact that the EU lawmaker had chosen to use the phrase \u201cor other characteristic\u201d<\/em> in that article shows that the prohibition is limited to signs which directly describe a quality or property of the goods or services in question, so that the relevant public can readily and immediately identify them as a property of those goods or services.<\/p>\n\n

Therefore, in this case the Grand Chamber applied the prohibition of Article 7(1)(c) to the contested goods and services on the basis that the relevant public (only Ireland and Malta, because of the \u201clinguistic and cultural link\u201d with the United Kingdom, notwithstanding the impact of Orwell\u2019s work worldwide) would identify the sign \u201cGEORGE ORWELL\u201d unequivocally and immediately with the famous British writer, his works or the ideas and themes deriving therefrom as the subject matter of those goods and services. Therefore, the Grand Chamber understands that where an author is of the stature of George Orwell, a sign consisting of his name may be perceived as descriptive of the content or character of the goods or services for which it is used. <\/p>\n\n

However, a dark cloud looms behind the above reasoning: To what extent will it be possible to interpret the sign as being perceived by the public as descriptive of the content of the goods or services in question? When will a consumer be able to link a business origin to the name and when not? <\/p>\n\n

The trade mark applicant, as well as the International Trademark Association (INTA) (which submitted observations as a third party), brought to light the existence of the decisions of the EUIPO Board of Appeal granting, for example, the trade mark \u201cJANIS JOPLIN\u201d (24\/03\/2015, R 2292\/2014-4) for \u201cCDs\u201d or \u201cDVDs\u201d or \u201cdownloadable sound recordings\u201d or \u201cLe journal d\u2019 Anne Frank\u201d (31\/08\/2015, R 2401\/2014-4) for, inter alia,<\/em> \u201cbooks\u201d. The applicant also brought up the granting of European Union trade marks for names of authors of the stature of the British author such as \u201cF. SCOTT FITZGERALD\u201d (EUTM No 15433519), \u201cALBERT CAMUS\u201d (EUTM No 11 832 458) for \u201cbooks\u201d, among other goods and services. <\/p>\n\n

In these confusing circumstances, the Grand Chamber lists a number of parameters to determine when the public will recognise an author\u2019s name on the sign and perceive it as descriptive of the content of the goods\/services for which it is used:<\/p>\n\n