Anne Frank Book Title Not Descriptive for Trade Mark Registration Purposes

The fourth board of Appeal at OHIM has recently issued a decision that the mark THE DIARY OF ANNE FRANK is registrable for goods and services including books.

Background

In December 2013 Anne Frank Fonds, the foundation set up by Anne Frank's father which holds all of the author's rights, applied to register the mark 'Le Journal d'Anne Frank' at OHIM. The application was filed as part of an international registration which included the designations of Benelux and France. The application in Benelux has been refused.

An application for the same mark was also filed at the UK Intellectual Property Office. The UK application has been refused and a subsequent appeal has been upheld.

The applications were filed in the following categories of goods and services:

9  Recorded optical, magnetic or electronic data media containing sounds and/or images, particularly compact disks; DVDs; sound recording disks; video cassettes; magnetic audio tapes; exposed films, exposed cinematographic films, electronic publications.

16 Printed matter; periodicals; magazines; newspapers and books.

41 Theater productions; showing of films; arranging of guided tours for cultural or educational purposes

In August 2014 an examiner from OHIM rejected the application on grounds that the mark was not registrable under Article 7(1)(b) CTMR. The examiner held that the mark comprised solely of the title of a book which is a well-known story. The examiner considered that the public would not see the mark as anything more than a reference to the subject matter, particularly in view of the books fame.

In reaching the decision the examiner raised the following points:

Everyone knows about Anne Frank's life story.
The fact that the mark Harry Potter has been registered as Community trade is not comparable to this case because Harry Potter is a fictional character.
The fame of the sign is a barrier to its registration.
The mark does not contain any distinguishing features.

Appeal

In September 2014, Anne Frank Fonds filed a notice of appeal. The Fourth Board of Appeal held the appeal admissible and well-founded. The board held that even though the title of the book may be well known, the book tells a specific story and therefore the title of the book is unique.   The expression, when taken as a whole, does not describe the goods and / or any of their characteristics.

The board also held that the repute of a mark cannot be a barrier to the registrability because the consumer will be able to recognise that the goods originate from the owner and able to distinguish them from their competitors.

The mark has not yet procceed to registration due to a suspended opposition by Anne Frank Stichting.