Me Tarzan! Me also trademark?

Practically everyone has heard of Tarzan, the fictional hero who was raised by apes in Africa.

A British company, JT Agro applied to use ‘Tarzan’ as a trademark for medical aids and nutritional supplements. Edgar Rice Burroughs Inc., the company behind the writer of Tarzan, filed an opposition against the application. But, is Tarzan, a fictional character, a trademark?

The opposition was rejected by the European Trademarks Office (EUIPO) due to insufficient evidence that Tarzan was being used as a trademark. The evidence presented only pertained to the fictional character Tarzan, and despite being known all over the world, the EUIPO ruled that it does not constitute use of a trademark for products and services. The opposing party appealed and asked for deferment of the decision, citing a current case that can potentially significantly influence the outcome of the appeal: the Animal Farm case.

Animal Farm

This case highlights an interesting question: can the title of a famous book or a fictional character also be a valid trademark? George Orwell’s widow, Sonia, had applied for a trademark in order to protect Georges literary legacy. The European application she filed to use ‘Animal Farm’ as a trademark for films, toys, entertainment, cultural activities and educational services was partially rejected. The European Trademarks Office stated that the trademark refers to the title of a famous work of art, and therefore does not specify the commercial origin of the products and services in question. In other words, it is not a trademark.

Sonia Orwell disagreed with the decision and appealed, citing the Anne Frank decision, whereby the title of the book ‘Le Journal d’Anne Frank’ had been accepted as a trademark. Both titles refer to a famous work of literature, so what is the difference between the two trademarks? This case is currently being considered by the Grand Board of Appeal, the highest appeal body of the European Trademarks Office.

The current state of affairs

Generally speaking, the title of a book describes its contents and therefore lacks distinctiveness. In the Dutch landmarkcase Jiskefet about an encyclopedy of a famous television program Jiskefet, the Dutch Supreme Court ruled that the title ‘Jiskefet Encyclopedie’ is nothing more than a description of the book’s contents and therefore cannot be used to distinguish goods or services. In other words, this title is not a trademark.

The famous title ‘The Jungle Book' was also not accepted as a trademark. It was ruled that The Jungle Book gradually acquired a thematic meaning and has been absorbed into everyday language as a synonym for a particular type of story or genre. ‘Le Journal d’Anne Frank’, was, however, accepted as a trademark. The reasoning here was that the producer of the products and services was identifiable and that the familiarity of a title itself is not in a barrier to registrability.

So when does a book title become more than a mere description of a book and qualify as a trademark that specifies its origin? ‘

Will this matter finally be resolved by the Grand Board’s judgment in the Animal Farm case? Either way, this is an interesting case that will hopefully shed more light on the recurring question of at what point a title or character can be considered a trademark.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.